LICENSE AGREEMENT
THIS AGREEMENT made and effective as of the date of last signing
(herein the "Effective Date") by and between SYNTHETIC BLOOD
INTERNATIONAL, INC., having a principal place of business at 0000
Xxxxxx Xxxxxx, Xxxxxxxx X, Xxxxx Xxxx, XX 00000 (hereinafter
"Company"), and CHILDREN'S HOSPITAL RESEARCH FOUNDATION an
operating division of Children's Hospital Medical Center
(hereinafter "CHRF"), having a principal place of business at 0000
Xxxxxx Xxxxxx, Xxxxxxxxxx, Xxxx 000000000, XXX.
INTRODUCTION
1. WHEREAS, CHRF has developed and is continuing research in the
area of Technology, as defined in Article 1. 1 of this
Agreement, and
2. WHEREAS, Company desires to obtain certain rights in and to
the Technology; and
3. WHEREAS, Company has represented to CHRF, to induce CHRF to
enter into this Agreement, that Company has the desire,
expertise and knowledge to develop, produce, market and
sell Products and/or to us Processes and that it shall commit
itself to a thorough, vigorous and diligent program of
exploratory the Technology such that public utilization shall
result therefrom; and
4. WHEREAS, Company and CHRF mutually desire to formalize an
agreement which delineates their respective rights and
obligations with respect to the Technology, and
5. WHEREAS, CHRF is the lawful owner of the Technology and Know-
how and has the right to grant the license as provided
herein.
NOW, THEREFORE, in consideration of the mutual covenants and
promises contained in this Agreement and other good and valuable
consideration, CHRF and Company agree as follows:
ARTICLE 1 - DEFINITIONS
In the terms defined and used herein, the singular shall include
the plural and vice versa. Terms in this Agreement (other than
names of parties and Article headings) which are set forth in
upper case letters have the meanings established for such terms in
the succeeding paragraphs of this Article 1.
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1.1 "Affiliate" means any company, corporation or business which
is at least fifty percent owned or controlled by Company, or
which owns or controls at least fifty percent of Company, or
which together with Company is commonly owned or controlled
by a third party who owns or controls at least fifty percent
of each
1.2 "Effective Date" of this Agreement means the date of last
signing.
1.3 "Field" means the continuous monitoring of blood glucose
levels in diabetes.
1.4 "Government" means the United States Government.
1.5 "Know-how" means the data and information embodied in the
Technology.
1.6 "Improvement" means any modification of Product and/or
Process made within the Term of this Agreement in the course
of research supported by Company hereunder.
1.7 "Patents" means any and all patent applications filed in any
country of the world by or on behalf of CHRF claiming the
Technology and/or any patents maturing from such patent
applications, specifically including United States Patents
No. 4,458,686 entitled "Cutaneous Methods of Measuring Body
Substances" and No. 4,680,268 and divisional patent No.
4,721,677 both entitled "Implantable Gas-Containing Biosensor
and Method for Measuring an Analyte Such as Glucose" and
corresponding foreign patents No. 0215678 for the countries
of Austria, Belgium, Switzerland, France, United Kingdom,
Italy; No. 1,284,454 for Canada; No. P3687871.5 for Germany
and Xx. 0000000 xxx Xxxxx, Xxxxxxxxxx, Xxxxxxxxxxx and
Sweden.
1.8 "Process" means any and all processes embodying the
Technology, Know-how and/or the Patents.
1.9 "Product" means any and all products embodying the
Technology, Know-how and/or the Patents.
1.10 "Technology" means Implantable glucose biosensor of CHRF as
described and claimed in the Patents; and Improvement
thereto.
1.11 "Term" means the period beginning on the Effective Date and
extending to the expiration of the last to expire Patent, or
for Fifteen (15) years, whichever is longer.
1.12 "Territory" means the world.
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ARTICLE 2 - LICENSE
2.1 CHRF hereby grants and agrees to grant to Company an
exclusive, license within the Territory, only in the Field,
to make, have made, use, distribute and market Products and
practice the Processes under the Technology, the Know-how
and/or the Patents.
2.2 The exclusive license specified in Paragraph 2.1 is subject
to the rights of CHRF to utilize the Technology, the Know-
how, the Processes and/or the Patents for the non-commercial
research purposes of CHRF.
2.3 The exclusive license specified in Paragraph 2.1 may be
subject to certain rights of the Government if the
Technology, the Know-how, and/or the Patents were created or
invented in the course of Government-funded research. Such
rights may include, for example, a royalty-free license to
the Government and the requirement that any Product produced
for sale in the United States will be manufactured
substantially in the United States.
ARTICLE 3 - DUE DILIGENCE
3.1 Company shall use its best efforts to bring one or more
Products or Processes to market through thorough, vigorous
and diligent programs of research, development, testing and
marketing of the Technology and to continue active, diligent
marketing efforts for one or more Products or Processes
throughout the life of this Agreement.
3.2 Company's failure to perform in accordance with any and all
portions of Paragraphs 3.1 above shall be grounds for CHRF to
terminate this agreement pursuant to Article 10.
ARTICLE 4 - PATENTS AND PATENT COSTS
4.1 CHRF shall retain title to the Technology, the Know-how and
the Patents.
4.2 CHRF shall maintain Patents in the United States and in all
foreign countries designated within Paragraph 1.7 herein.
4.3 Company agrees promptly to reimburse CHRF for its outside
legal costs incurred under Paragraph 4.2.
4.4 Failure of Company to pay the amounts required under
Paragraph 4.3 within thirty (30) days of the receipt of a
written statement will be a breach of this Agreement.
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ARTICLE 5 - PAYMENTS
5.1 Upon execution of this Agreement, Company shall pay to CHRF a
license fee ("License Fee") of thirty six thousand sixty two
dollars and thirteen cents ($36,062.13) within thirty days (30)
days of the Effective Date.
5.2 Company agrees to pay CHRF for all future patent maintenance
and legal fees associated with the Patents within thirty
(30) days of receipt of invoice from CHRF.
5.3 In addition, Company agrees to issue to CHRF within thirty
(30) days of the Effective Date, a certificate for fifteen
thousand (15,000) shares of duly authorized common stock of
Company, subject to CHRF's due diligence of Company and
agreement on the value of said shares.
ARTICLE 6 - INFRINGEMENT
6.1 Each party shall promptly report in writing to the other
party during the Term of this Agreement any infringement or
suspected infringement of any patent, or unauthorized use or
misappropriation of the Technology or Know-how by a third
party of which it becomes aware, and shall provide the other
party with all available evidence supporting said
infringement, suspected infringement, suspected infringement
or unauthorized use or misappropriation.
6.2 Except as provided in Paragraph 6.3, Company shall have the
right to initiate an infringement suit or other appropriate
action against any third party who at any time has infringed
or is suspected of infringing any of the Patents or of using
without proper authorization all or any portion of the
Technology or Know-how. Company shall give CHRF sufficient
advance written notice of its intent to initiate such action
and the reasons therefor, and shall provide CHRF with an
opportunity to make suggestions and comments regarding such
action. Company shall keep CHRF promptly informed of the
status of any such action. Company shall have the sole and
exclusive right to select counsel for and shall pay all
expenses of such action. CHRF shall offer reasonable
assistance to Company in connection there-with at no charge
to Company except for reimbursement of reasonable out-of-
pocket expenses. Company may settle any such action without
prior approval of CHRF. CHRF shall receive ten percent (10%)
of all damages, profits or awards of whatever nature
recovered from such action under this Agreement after Company
has been compensated for its costs in handling such action.
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6.3 In the event that Company does not within six (6) months (a)
secure cessation of the infringement, or (b) enter suit
against the infringer, CHRF shall thereafter have the right
but not the obligation to convert Company's exclusive license
hereunder to a non-exclusive license and/or to take action
against the infringer at CHRF's own expense. Company shall
offer reasonable assistance to CHRF in connection with such
action at no charge to CHRF except for the reimbursement of
reasonable out-of-pocket expenses. Any damages, profits or
awards of whatever nature recovered from such action shall
belong solely to CHRF.
ARTICLE 7 - WARRANTY DISCLAIMER
7.1 Nothing in this Agreement shall be construed as:
(a) A warranty or representation by CHRF as to the validity or
scope of any Patent;
(b) A warranty or representation that anything made, used, sold
or otherwise disposed of under any license granted in this
Agreement is or will be free from infringement of patents,
copyrights and/or trademarks of third parties;
(c) An obligation of CHRF to bring or prosecute actions or suits
against third parties for infringement;
(d) Conferring rights to use in advertising, publicity or
otherwise any trademark or the name of CHRF or the Children's
Hospital Medical Center of Cincinnati, Ohio; or
(e) Granting by implication, estoppel or otherwise any licenses
under patents of CHRF other than Patents, regardless of
whether such other patents are dominant of or subordinate to
any Patent.
7.2 Except as expressly set forth in this Agreement, CHRF MAKES
NO REPRESENTATIONS, EXTENDS NO WARRANTIES OF ANY KIND, EITHER
EXPRESS OR IMPLIED, AND ASSUMES NO RESPONSIBILITIES WHATEVER
WITH RESPECT TO THE USE, SALE OR OTHER DISPOSITION BY COMPANY
OR ITS VENDEES OR OTHER TRANSFEREES OF PRODUCTS INCORPORATING
OR MADE BY USE OF INVENTIONS LICENSED UNDER THIS AGREEMENT OR
INFORMATION, IF ANY, FURNISHED UNDER THIS AGREEMENT. SUCH
INVENTIONS AND INFORMATION ARE PROVIDED AS IS, WITHOUT
WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE OR ANY OTHER WARRANTY, EXPRESS OR IMPLIED.
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ARTICLE 8 - NOTICES
8.1 Communications to Company concerning this Agreement should be
addressed to:
Synthetic Blood International, Inc.
0000 Xxxxxx Xxxxxx, Xxxxxxxx X
Xxxxx Xxxx, XX 00000
ATTN: Xxxxxx X. Xxxxxx
President
8.2 Communications to CHRF concerning this Agreement should be
addressed to:
Director, Technology Transfer
Childrens Hospital Research Foundation
0000 Xxxxxx Xxxxxx
Xxxxxxxxxx, Xxxx 00000-0000
Fax: 513/000-0000
ATTN: Xxxxxx X. Xxxxxxxxx, Ph.D.
ARTICLE 9 - TERMINATION
9.1 Company may terminate this Agreement at any time by providing
one (1) year's written notice to CHRF.
9.2 In the event that Company shall be in default of any of its
obligations hereunder, CHRF may at its sole option: (a)
terminate this Agreement or (b) convert the exclusive license
hereunder to a non-exclusive license. This option (a) or (b)
of CHRF shall be exercised by written notice to Company
specifying the nature of the and shall be effective thirty
(30) days following receipt of said notice by Company unless
Company cures said default prior to the expiration of said
period of thirty (30) days.
9.3 Upon termination of this Agreement or conversion to a non-
exclusive license as provided under Paragraphs 9.1 or 9.2,
neither party shall be relieved of any obligations incurred
prior to such termination or conversion, and the obligations
of the Parties under Articles 4 and 7 and Paragraphs 10.3 and
10.4 or any provisions which by their nature are intended to
survive any such termination or conversion shall survive and
continue to be enforceable.
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ARTICLE 10 - MISCELLANEOUS
10.1 Company agrees to defend CHRF at Company's cost and expense,
and will indemnify and hold harmless CHRF from and against
any and all losses, costs, damages, fees or expenses arising
out of or in connection with the manufacture, use,
commercialization, marketing or sale by Company of any
Product and/or Process hereunder.
10.2 Neither this Agreement nor any of the rights or
obligations hereunder may be assigned by either party without
the prior written consent of the other party.
10.3 It is understood that CHRF is subject to United States laws
and regulations controlling the export of technical data,
computer software, laboratory prototypes and other
commodities, and that its obligations hereunder are
contingent on compliance with all applicable United States
export laws and regulations. The transfer of certain
technical data and/or commodities may require a license from
the cognizant agency of the United States Government and/or
written assurances by Company that Company shall not export
data or commodities to certain foreign countries without
prior approval of such agency. CHRF neither represents nor
warrants that a license shall not be required nor that, if
require, it shall be issued. In any event, Company
specifically agrees not to export or re-export any
information and/or technical data and/or products in
violation of any applicable USA laws and/or regulations.
10.4 This Agreement shall be construed under and interpreted under
the Laws of the State of Ohio, USA, except that questions
affecting the construction and effect of any Patent shall be
determined by the national law of the country in which the
Patent has been granted.
10.5 In the event that either party is prevented from performing
or is unable to perform any of its obligations under this
Agreement due to any act of God, fire, casualty, flood, war,
strike, lockout, failure of public utilities, government
regulation or the like, such party shall give notice to the
other party in writing promptly, and thereupon the affected
party's performance shall be excused and the time for
performance shall be extended for the period of delay or
inability to perform due to such occurrence.
10.6 The waiver by either party of a breach or default of any
provisions of this Agreement by the other party must be in
written form and signed by both parties, and shall not be
construed as a waiver of any succeeding breach of the same or
any other provision.
10.7 This Agreement contains the full understanding of the parties
with respect to the subject matter hereof and supersedes all
prior understandings and writings relating thereto.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement
to be executed by their properly and duly authorized officers or
representatives as of the date first above written.
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CHILDREN'S HOSPITAL SYNTHETIC BLOOD
RESEARCH FOUNDATION INTERNATIONAL, INC.
/s/ Xxxxxx X. Boat /s/ Xxxxxx X. Xxxxxx
Xxxxxx X. Boat, M.D. Xxxxxx X. Xxxxxx
Director President
2/27/01 2/2801
Date Date
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