TECHNOLOGY LICENSE AGREEMENT
This Agreement, effective October 16, 2001, ("EFFECTIVE DATE"), is
entered into by Bechtel B WXT Idaho, LLC, having its principal place of business
at 0000 X. Xxxxxxx Xxxxxx, Xxxxx Xxxxx, Xxxxx, 00000 ("BBWI"), and TETRIDYN
Solutions, Inc. having its principal place of business at 0000 Xxxxxx, Xxxxx
Xxxxx, Xxxxx ("TETRIDYN"). The parties hereto also referred to singularly or
collectively as "Party" or "Parties".
BACKGROUND
Under research programs funded by BBWI and the United States (U.S.)
Government, BBWI has developed certain technology and intellectual property
pertaining to data integration, management and presentation.
BBWI is a management and operating contractor of the Idaho National
Engineering and Environmental Laboratory ("INEEL") under its Xxxxxxxx Xx.
XX-XX00-00XX00000.
BBWI desires to license the technology to TETRIDYN thereby benefiting
U.S. competitiveness by TETRIDYN commercially developing, manufacturing, using,
and distributing processes and products embodying the technology.
TETRIDYN is engaged in the business of providing software and related
consulting services and desires to receive a license from BBWI in order to
commercially develop, manufacture, use, and distribute processes and products
embodying the technology.
The Parties agree as follows:
Article 1
Definitions
1.1 ACCOUNTING PERIOD means each six (6) month period ending June 30 and
December 31.
1.2 CLAIM means any patent claim that has not: (a) expired; (b) become
abandoned; or (c) been declared unpatentable, unenforceable, or invalid by a
patent office or a court of competent jurisdiction in any unappealed and
unappealable decision.
1.3 DERIVATIVE WORKS are any works that are based on the LICENSED MATERIALS or
any portion thereof and that, if prepared without BBWI's permission, would
constitute an infringement of the LICENSED MATERIALS.
1.4 LICENSED INTELLECTUAL PROPERTY means patents, patent applications, and
invention disclosure records, licensable by BBWI which pertain to the Licensed
Technology identified in attached Appendix A.
1.5 LICENSED MATERIALS shall mean computer software [in source and object code]
and related documentation therefor provided to TETRIDYN by BBWI and identified
in attached Appendix A.
1.6 LICENSED PRODUCTS means any apparatus, product, process, product-by-process,
or the manufacture, use, importation, offering for sale, or sale of which
embodies in whole or in part at least one CLAIM of any of the LICENSED
INTELLECTUAL PROPERTY.
1.7 LICENSED TERRITORY means worldwide.
1.8 NET SALES PRICE means the total amounts invoiced to purchasers for LICENSED
PRODUCTS or LICENSED MATERIALS sold, leased, or otherwise made available by
TETRIDYN or a SUBLICENSEE less deduction of regular trade and quantity discounts
and any allowances and credits because of returns and price adjustments for
LICENSED PRODUCTS or LICENSED MATERIALS previously transferred. When LICENSED
PRODUCTS are not sold separately, but are sold in combination with or as parts
of other products, the NET SALES PRICE of LICENSED PRODUCTS or LICENSED
MATERIALS so sold, leased, or otherwise made available by TETRIDYN or a
SUBLICENSEE shall be the published list price (or, if there is no published list
price, then the price at which LICENSED PRODUCTS or LICENSED MATERIALS are
typically sold) for the LICENSED PRODUCTS or LICENSED MATERIALS when sold alone,
or the actual price paid or attributed to the LICENSED PRODUCTS or LICENSED
MATERIALS for the sale in question, whichever is higher.
1.9 SUBLICENSEE means a licensee of TETRIDYN having a properly executed license
agreement with TETRIDYN to practice, and if applicable, make available to
others, the LICENSED INTELLECTUAL PROPERTY or LICENSED MATERIALS in accordance
with the terms and conditions of this Agreement.
Article 2
License Grant
2.1 Subject to the pre-existing rights set forth in this Article, BBWI grants to
TETRIDYN an exclusive, royalty bearing license under LICENSED INTELLECTUAL
PROPERTY, including the right for TETRIDYN to grant sublicenses, to make, have
made, use, sell, offer to sell, and import LICENSED PRODUCTS in the LICENSED
TERRITORY. Affiliates and subsidiaries shall be considered separate entities and
must have a sublicense to practice these rights.
2.2 Excepting issued License Agreements (99-LA-O14 issued to LSC Group and
99-LA-019 issued to SmithKline Xxxxxxx Pharmaceuticals) and subject to the grant
by DOE to BBWI of authorization to assert copyright in the LICENSED MATERIALS,
the BBWI grants to TETRIDYN an exclusive right to use, copy, modify, distribute,
prepare DERIVATIVE WORKS and compilations, perform and display publicly the
LICENSED MATERIALS within the LICENSED TERRITORY where BBWI may lawfully grant
such a license. BBWI further grants to TETRIDYN the right to grant sublicenses
to others only for the right to use, copy and grant to others the right to only
use the executable object code and documentation of said LICENSED MATERIALS. Any
2
sublicense granted by the Licensee shall include all of the rights and
obligations due the BBWI and the U.S. Government that are contained in this
License Agreement.
2.3 Notwithstanding provisions 2.1 and 2.2, BBWI retains a right to issue not
more than two (2) use-only license agreements each calendar year to support
INEEL Work For Others programs.
2.4 Notwithstanding provisions 2.1 and 2.2, the U.S. Government retains a
worldwide, nonexclusive, nontransferable, irrevocable, paid-up license to
practice or have practiced the LICENSED INTELLECTUAL PROPERTY for or on behalf
of the U.S. Government.
2.5 The U.S. Department of Energy (DOE) has certain march-in rights to the
LICENSED INTELLECTUAL PROPERTY and LICENSED MATERIALS in accordance with 48 CFR
27.304-1(g).
2.6 The Government and others acting on its behalf retain a paid-up,
non-exclusive, irrevocable world-wide license in LICENSED MATERIALS to
reproduce, prepare DERIVATIVE WORKS, perform publicly and display publicly.
Unless the above limited Government retained license is extended by the DOE, 4
years after the EFFECTIVE DATE, the Government may also permit others to
reproduce, distribute copies to the public, prepare DERIVATIVE WORKS, perform
publicly and display publicly LICENSED MATERIALS.
Article 3
License Fees and Royalties
3.1 TETRIDYN shall pay to BBWI the license fees, royalties, and royalty based
payments as specified and in accordance with attached Appendix B, which is
hereby incorporated within this Agreement.
Article 4
Sublicensing
4.1 TETRIDYN shall provide BBWI with a list of all sublicenses entered into
during the preceding calendar year and the revenues received from each
sublicense by the end each February. Prior to entering into an exclusive
sublicense, approval shall be obtained from BBWI. Such approval will be deemed
effective upon BBWI granting TETRIDYN written approva1 of such exclusive
sublicense.
4.2 It is anticipated that in general, sublicenses will be granted to allow
normal use of the software specified in the LICENSED MATERIALS. Any sublicense
that grants all, or substantially all, of the rights granted TETRIDYN under this
Agreement will be considered an assignment and is subject to Article 11.
3
4.3 All sublicense agreements will set forth at a minimum the U.S. Government's
retention of a worldwide, nonexclusive, nontransferable irrevocable, paid-up
license to LICENSED INTELLECTUAL PROPERTY and LICENSED MATERIALS for or on
behalf of the U.S. Government throughout the world; the DOE's march-in rights of
Article 2; the export control requirements of Article 13; the marking
requirement of Article 16; and the U.S. manufacturing preference set forth in
Article 15.
4.4 If this Agreement is terminated for any reason, TETRIDYN shall, upon written
request of BBWI, immediately assign all of its rights to all sublicenses to
BBWI, including the right to receive all income from SUBLICENSEES. TETRIDYN
shall prior to execution of each sublicense make the SUBLICENSEE aware this
contingency.
4.5 Division of sublicensing royalty income is specified in Appendix B.
Article 5
Obtaining and Maintaining Intellectual Property
5.1 BBWI shall be responsible for the preparation, filing, prosecution and
maintenance of U.S. patent applications and U.S. patents included in the
LICENSED INTELLECTUAL PROPERTY, that are incurred prior to the execution of the
Agreement. BBWI will continue to prepare, file, prosecute and maintain these
patents after execution of this Agreement, but TETRIDYN will reimburse BBWI for
all reasonable out of pocket costs associated with these actions, except for the
cost of BBWI's internal Patent Counsel.
5.2 If TETRIDYN desires non-U.S. patent protection for LICENSED INTELLECTUAL
PROPERTY, TETRIDYN shall be responsible for the preparation, filing, prosecution
and other related expenses of such non-U.S. patent applications and non-U.S.
patents included in the LICENSED INTELLECTUAL PROPERTY, such applications to be
filed solely in the name of BBWI or its designee.
5.3 With respect to the LICENSED INTELLECTUAL PROPERTY, each document pertaining
to the filing, prosecution, or maintenance of a foreign patent application or
foreign patent, including but not limited to each patent application, office
action, response to office action, request for terminal disclaimer, and request
for reissue or reexamination of any patent issuing from such application will be
provided to BBWI. Documents received from any patent office or counsel's
analysis thereof shall be provided to BBWI promptly after receipt. If TETRIDYN
elects not to pay or continue to pay the out of pocket costs associated for such
LICENSED INTELLECTUAL PROPERTY, TETRIDYN shall notify BBWI within thirty (30)
days of TETRIDYN's decision and TETRIDYN shall thereafter be relieved of the
obligation to pay any additional costs regarding such LICENSED INTELLECTUAL
PROPERTY incurred after the receipt of such notice by BBWI. Such foreign patent
application or patent will thereupon cease to be LICENSED INTELLECTUAL PROPERTY
and BBWI will be free to license its rights to that particular foreign patent
application or patent to any other party on any terms.
4
Article 6
Payments and Reports
6.1 TETRIDYN shall keep, and will cause each of its SUBLICENSEES, if any, to
keep detailed and accurate accounting records containing all information and
data necessary for determining performance and calculating all fees, royalties,
and royalty based payments payable to BBWI. Such accounting records, with all
necessary supporting information and data will, during all reasonable times for
the three (3) years following the end of the calendar year to which each
accounting record pertains, will be available and open for inspection at
reasonable times by BWWI or its designee, and at BBWl's expense, for verifying
royalty reports or verifying TETRIDYN's compliance with this Agreement.
6.2 The amount of royalty due will be calculated semi-annually as of the end of
each ACCOUNTING PERIOD and will be paid in U.S. currency within sixty (60) days
from these dates. Conversion from any foreign currency will be at the rate of
exchange published in the Wall Street Journal for the business day closest to
the end of the applicable ACCOUNTING PERIOD. If no amount is accrued during any
ACCOUNTING PERIOD, TETRIDYN shall provide a written statement indicating such to
BBWI.
6.3 With each royalty payment, TETRIDYN shall deliver to BBWI a full and
accurate report to include the following information:
(a) Quantity (by country) of the LICENSED PRODUCTS sold, leased,
or otherwise disposed of by TETRIDYN and each SUBLICENSEE;
(b) The total NET SALES PRICE of the LICENSED PRODUCTS (by
country) sold, leased or otherwise disposed of by TETRIDYN and
each SUBLICENSEE;
(c) Quantities of the LICENSED PRODUCTS used internally by
TETRIDYN and each SUBLICENSEE;
(d) Names and addresses of each SUBLICENSEE of TETRIDYN; and
(e) Total royalties payable to BBWI.
6.4 Payments provided for in this Agreement, if overdue, will bear an annual
interest of three percent (3%) in excess of the "Prime Rate" published by "The
Wall Street Journal" at the time the payment is due, and for the time period
until payment is received by BBWI. Payments that become more than ninety (90)
days overdue will place TETRIDYN in default of this Agreement.
6.5 If this Agreement is terminated before all payments required up to the
termination date under this Agreement have been made, TETRIDYN shall submit a
termination report and pay to BBWI any remaining unpaid balance within, sixty
(60) days of the termination date even though the due date has not been reached.
5
6.6 No royalty shall be owed on any LICENSED PRODUCTS produced for, or under any
U.S. government agency contract pursuant to the government retained
non-exclusive license, but only to the extent that TETRIDYN can show that the U.
S. Government received a discount on LICENSED PRODUCTS sales, which discount is
equivalent or greater than the amount of any such royalty that would otherwise
be due. All sales for U.S. Government purposes must be reported under this
Article 6 and such reports will include (a) U.S. Government contract-number, (b)
identification of the U.S. Government Agency, and ( c) a description as to how
the benefits of the royalty free sale was passed on to the U.S. Government.
Article 7
Performance Requirements
7.1 TETRIDYN shall itself, and through its SUBLICENSEES, use its best efforts to
develop and make LICENSED PRODUCTS commercially available by selling and
distributing LICENSED PRODUCTS and LICENSED MATERIALS throughout the LICENSED
TERRITORY.
7.2 TETRIDYN shall achieve the performance milestones indicated in Appendix B.
TETRIDYN shall notify BBWI in writing of completion of each specified
performance milestone within thirty (30) days of the completion date. If
TETRIDYN fails to achieve a performance milestone by the due date, a written
statement to that effect must be furnished. If TETRIDYN fails to achieve a
performance milestone BBWI has, at its sole discretion, the option thereafter,
to convert the exclusive license to a non-exclusive license or to terminate the
license by giving written notice to that effect.
Article 8
Disclaimer of Warranties and Indemnification
8.1 BBWI does not warrant the validity of the LICENSED INTELLECTUAL PROPERTY or
LICENSED MATERIALS and makes no representation whatsoever with regard to the
extent in which the LICENSED INTELLECTUAL PROPERTY or LICENSED MATERIALS may be
practiced or exploited by TETRIDYN, or its SUBLICENSEES, or transferees without
infringing patents or other intellectual property held by third parties.
8.2 NEITHER BBWI NOR THE U.S. GOVERNMENT MAKE ANY REPRESENTATIONS, EXTEND ANY
WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING THOSE OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE, OR ASSUME ANY
RESPONSIBILITIES WHATEVER WITH RESPECT TO USE, SALE, OR OTHER DISPOSITION BY
TETRIDYN, TETRIDYN'S SUBLICENSEES OR ITS TRANSFEREES OF ANY PRODUCTS, PROCESSES,
OR MATERIALS DEVELOPED IN CONNECTION WITH OR ARISING OUT OF INTELLECTUAL
PROPERTY RIGHTS OR TECHNICAL INFORMATION, OR THAT ANYTHING MADE, USED, OFFERED
FOR SALE, SOLD, IMPORTED, OR OTHERWISE DISPOSED OF UNDER ANY LICENSE GRANTED IN
THIS AGREEMENT IS OR WILL BE FREE FROM INFRINGEMENT OF ANY THIRD PARTY PATENT OR
OTHER INTELLECTUAL PROPERTY.
6
8.3 ETRIDYN and its SUBLICENSEES shall indemnify, defend, and hold harmless BBWI
and the U.S. Government for all damages, costs, and expenses, including
attorneys' fees, arising out of: (a) the use by or on behalf of TETRIDYN or
SUBLICENSEES, including employees and members of the board of directors thereof,
or third parties of any LICENSED INTELLECTUAL PROPERTY or LICENSED MATERIALS; or
(b) the making, using, offering to sell, selling, importing, exporting of
materials, processes, or services derived therefrom or otherwise making
available or disposing of any apparatus, products, processes, or materials
developed in connection with or arising out of such LICENSED INTELLECTUAL
PROPERTY or LICENSED MATERIALS.
8.4 Neither BBWI nor the U.S. Government will be liable for any indirect,
special, consequential, or other damages whatsoever, whether grounded in tort
(including negligence), strict liability, contract, or otherwise.
8.5 TETRIDYN shall, at its own expense, provide attorneys reasonably acceptable
to BBWI to defend against or participate in the defense of any actions brought
or filed against the U.S. Government or BBWI, indemnified above.
Article 9
Expiration and Termination
9.1 Unless the Agreement is terminated sooner, this Agreement will expire upon
the later of: (a) the expiration of the last to expire of any patent included in
the LICENSED INTELLECTUAL PROPERTY; (b) the abandonment of the last to be
abandoned of any patent application included in the LICENSED INTELLECTUAL
PROPERTY or (c) the maximum period of the time that BBWI may grant TETRIDYN a
copyright license hereunder in accordance BBWI's contract with DOE.
9.2 If either Party is in default of any material obligation of this Agreement,
or is adjudged bankrupt, or becomes insolvent, or makes an assignment for the
benefit of creditors, or is placed in the hands of a receiver or trustee in
bankruptcy, the other Party may terminate this Agreement by giving at least
thirty (30) days written notice to the other Party, specifying the basis for
termination. If within thirty (30) days after the receipt of the notice, the
other Party remedies the condition, this Agreement will continue in full force
and effect.
9.3 The following rights and obligations survive any termination of this
Agreement:
(a) TETRIDYN's obligation to supply terminal report;
(b) BBWI's right to receive royalties and TETRIDYN's obligation to
pay royalties accrued or accruable for payment at the time of
any termination;
(c) TETRIDYN's obligation to maintain records:
7
(d) Any BBWI cause of action or claim accrued or to accrue,
arising from breach or default by TETRIDYN; and
(e) The Disclaimer of Warranties and Indemnification.
Article 10
Litigation
10.1 Upon a Party suspecting a third party infringing any of the LICENSED
INTELLECTUAL PROPERTY or LICENSED MATERIALS, such Party shall notify the other
party in writing of the suspected infringement of the LICENSED INTELLECTUAL
PROPERTY or LICENSED MATERIALS and shall also provide or make available to the
other Party any evidence of the suspected infringement.
10.2 For as long as TETRIDYN retains an exclusive 1icense hereunder, TETRIDYN
has the first right to file suit for infringement of LICENSED INTELLECTUAL
PROPERTY or LICENSED MATERIALS against third parties in the LICENSED FIELD and
the LICENSED TERRITORY. Subject to approval by the U.S. Department of Energy,
BBWI will, upon TETRIDYN's request, join as a party plaintiff in any lawsuit
filed by TETRIDYN against a third party. All BBWI costs, attorney fees, and
expenses shall be paid by TETRIDYN. BBWI may, at its own expense and sole
option, bring the suit or take any other appropriate action if TETRIDYN does not
file the suit within ninety (90) days from receiving written notice from BBWI of
its desire to bring the infringement suit against a third party on its own
behalf.
10.3 The Party bringing suit against a third party under Article 10.2 is
entitled to any resulting recovery of damages.
10.4 Any settlement with an infringer requires prior written approval of the
other Party if the settlement affects, or could affect, the rights held by the
other Party in the LICENSED INTELLECTUAL PROPERTY or LICENSED MATERIALS.
Article 11
Non-Assignability
11.1 This Agreement imposes personal obligations on TETRIDYN, thus TETRIDYN
shall not assign any rights under this Agreement without the written consent of
BBWI, and consent to an assignment shall not be unreasonably withheld. The sale
of all, or substantially all, of the assets of TETRIDYN, or any transaction that
results in a material change of the personal obligations agreed to by TETRIDYN
shall be deemed an assignment and the transfer or an assignment of such rights
is subject to approval by BBWI. BBWI may assign its rights under this Agreement,
to the DOE or BBWI' s successor as management and operating contractor of the
INEEL.
Article 12
Severability
8
12.1 If any part, term, or provision of this Agreement is found illegal or in
conflict with any valid controlling law, the validity of the remaining
provisions will not be affected thereby.
Article 13
Export Control
13.1 The Parties understand that the export of goods and/or technical data from
the U.S. may require some form of export control license from the U.S.
Government and that failure to obtain such export control license may result in
criminal liability under the U.S. laws.
Article 14
Waiver, Integration, Alteration
14.1 The waiver of a breach requires a writing signed by the waiving Party and
is not a waiver of any other breach.
14.2 This Agreement is the entire understanding between the Parties, and
supersedes all other agreements, express or implied, between the Parties
concerning the LICENSED INTELLECTUAL PROPERTY and LICENSED MATERIALS.
14.3 This Agreement may be altered only by a written change signed by both
Parties, except as provided in Article 12 or Article 14.1, above.
Article 15
U.S. Preference
15.1 Any LICENSED PRODUCTS for use or sale in the U.S. under any LICENSED
INTELLECTUAL PROPERTY will be substantially manufactured in the U.S. All
sublicense agreements will contain terms incorporating this requirement.
15.2 TETRIDYN shall consider the following factors in its sublicensing
decisions.
(a) whether the proposed sublicensee has a business unit located
in the U.S. and whether significant economic and technical
benefits will flow to the U.S. as a result of the sublicense;
and
(b) whether in sublicensing any entity subject to the control of a
foreign company or government, the foreign government permits
U.S. agencies, organizations or other persons to enter into
licensing agreements, and have policies to protect U.S.
intellectual property rights.
15.3 lf TETRIDYN determines that either of the above conditions in this Article
may possibly not be fulfilled, TETRIDYN, before entering into the sublicensing
agreement, must specifically inform BBWI of such, as well as comply with Article
4.1. BBWI shall use reasonable efforts to act on a request for approval within
thirty (30) days of receipt of the request for approval.
9
Article 16
Marking
16.1 TETRJDYN and its SUBLICENSEES shall place in a conspicuous location on the
LICENSED PRODUCTS, or if not possible, on the container thereof, a patent notice
in accordance with 35 U.S.C. ss. 282. TETRJDYN agrees to xxxx each LICENSED
PRODUCT, or container thereof, with the number of each applicable patent.
TETRIDYN shall also respond to any request for disclosure under 35 U.S.C. ss.
287(b)(4)(B) by notifying BBWI of the request.
16.2 TETRIDYN agrees to affix the applicable copyright notice of 17 USC 401, or
402 and also a notice of the Government's sponsorship, license rights, and
disclaimer of liability with regard to the LICENSED MATERIALS, on each copy
sublicensed by TETRIDYN and its SUBLICENSEES.
Article 17
Dispute Resolution
17.1 The Parties shall make a good faith effort to promptly settle any
controversy or claim arising out of or relating to this Agreement, or breach
thereof, by negotiation between members of the management of each Party having
authority to settle any controversy or claim arising out of or relating to this
Agreement and/or by way of working through the Technology Transfer Ombudsman
Office of BBWI. If such efforts are not successful, the Parties shall then try
in good faith to settle such controversy or claim by mediation administered by
the American Arbitration Association under its then current Commercial Mediation
Rules (xxx.xxx.xxx) before resorting to arbitration, litigation, or any other
dispute resolution procedure. The Parties understand and agree this Article will
not preclude a Party from seeking preliminary injunctive relief in order to
reasonably prevent irreparable harm to such Party.
Article 18
Governing Law
18.1 This Agreement will be governed and construed by the law of Idaho
applicable to contracts made or performed therein. Any lawsuits relating to this
Agreement will be brought in a court of competent jurisdiction in Idaho.
Article 19
Notices
19.1 All written communication and notices to be submitted between the Parties
are to be sent to the following respective addresses:
10
TETRIDYN: BBWI:
President Director of Technology Transfer and
TETRIDYN Solutions, Inc. Commercia1ization
1139 Xxxxxx, Xxxxxxx BWXT Idaho, LLC
Xxxxx Xxxxx, Xxxxx 00000 P.O. Box 1625
0000 X. Xxxxxxx Xxx.
Xxxxx Xxxxx, Xxxxx 00000-0000
Or any other addresses of which either Party notifies the other Party in
writing.
The Parties have executed this Agreement as evidenced by their
respectively authorized officers signing on the respective date(s) set forth
below:
TETRIDYN Solutions, Inc. Xxxxxxx BWXT Idaho, LLC
By: /s/ Xxxxx X. Xxxxxxxxx By: /s/ Xxxxx X. Xxxxx
--------------------------- ----------------------------------
Name:__________________________ Xxxxx X. Xxxxx
Title:_________________________ Director, Office of Technology
Transfer and Commercialization
Date: October 16, 2001 Date: 15 October 2001
------------------------- -------------------------------
11
APPENDIX A
LICENSED TECHNOLOGY
A1. LICENSED INTELLECTUAL PROPERTY is as defined in section 1.4 of this
Agreement and includes the following invention disclosure records and related
U.S. or foreign patents and patent applications, if any, including all
divisions, continuations, reissues, substitutes and extensions.
B-110 Merlin Mediation System
A2. LICENSED MATERIALS is as defined in section 1.5 of this Agreement and
includes the following software:
SW -Xxxxxx- Xxxxxx Mediation System [/s/LF]
12
PROPRIETARY INFORMATION
APPENDIX B
LICENSE FEES AND ROYALTIES
Bl. TETRIDYN represents and warrants that it has met the established financial
objective of receiving financial or equivalent capital commitments recommended
for a BBWI spinout company of One Million Five Hundred Thousand dollars (US
$1,500,000). If BBWI determines that during the first six months period after
the EFFECTNE DATE TETRIDYN does not have such amount of capitalization (using
generally accepted accounting practices), then BBWI may, at its sole discretion,
terminate this agreement by providing written notice to TETRIDYN. TETRIDYN
agrees further that said capital would be used exclusively for normal business
of a business entity engaged in commercialization of the Licensed Technology (as
defined in Appendix A).
B2.1 TETRIDYN shall pay to BBWI in U.S. currency, a lump sum license execution
fee of One Hundred Thousand dollars (US $100,000) at the time cumulative
revenues from LICENSED PRODUCTS or products derived from LICENSED MATERIALS
reaches Ten Million dollars (US $10,000,000) and Five Hundred Thousand dollars
(US $500,000) at the time cumulative revenues from LICENSED PRODUCTS or products
derived from LICENSED MATERIALS reaches Fifty Million dollars (US$50,000,000).
The license execution fees are nonrefundable and not creditable against
royalties.
B2.2 If TETRIDYN maintains its corporate headquarters and key operations within
seventy-five miles of Idaho Falls, Idaho, TETRIDYN shall pay to BBWI a royalty
for sales of LICENSED PRODUCTS or products derived from LICENSED MATERIALS of
four percent (4%) of the NET SALES PRICE of any LICENSED PRODUCTS or LICENSED
MATERIALS used, sold, or otherwise disposed of or made available to a third
party by TETRIDYN or a SUBLICENSEE.
B2.3 If TETRIDYN does not maintain its corporate headquarters and key operations
within seventy-five miles of Idaho Falls, Idaho, TETRIDYN shall pay to BBWI a
royalty for sales of LICENSED PRODUCTS or products derived from LICENSED
MATERIALS of eight percent (8%) of the NET SALES PRICE of any LICENSED PRODUCTS
or LICENSED MATERIALS used, sold, or otherwise disposed of or made available to
a third party by TETRIDYN or a SUBLICENSEE.
B2.4 For the first three hundred sixty-five days from the EFFECTIVE DATE
TETRIDYN shall pay to BBWI an additional eleven percent (11 %) royalty to the
established rates above for a LICENSED PRODUCTS used, sold, or otherwise
disposed of or made available to a third party by TETRIDYN, which resulted from
marketing efforts made by the BBWI prior to the EFFECTIVE DATE.
The companies, agencies or institutions toward which BBWI marketing efforts were
directed include, but are not limited to: [/s/LF]
00
Xxxxx XxxxxXxxxx
XXXXX
XXXX
XXXXXXXXX
Xxxxx of Idaho Controller's Office
State of Idaho Health and Welfare Office
AT Xxxxxx
Oracle
Scientech
B2.5 TETRIDYN shall satisfy the following performance milestones within the
times indicated from the EFFECTIVE DATE:
a. After thirty-six (36) months from the EFFECTIVE DATE, TETRIDYN
must have achieved gross sales of LICENSED PRODUCTS and
LICENSED MATERIALS of One Million Dollars ($1,000,000) per
calendar year.
b. After sixty months (60) months from the EFFECTIVE DATE,
TETRIDYN must have achieved gross sales of LICENSED PRODUCTS
and LICENSED MATERIALS of Two Million Dollars ($2,000,000) per
calendar year.
[/s/LF]
14
April 11, 2002 CCN31609
Xx. Xxxx Xxxxxxxxx, President
TETRIDYN Solutions, Inc.
0000 Xxxxxx
Xxxxx Xxxxx, XX 00000
MODIFICATION TO LICENSE AGREEMENT NUMBER 02-LA-02
Dear Xxxx:
As a result of our review meeting held on April 10, 2002, our License Agreement,
number 02-LA-02, dated October 16, 2001, will be modified as described below.
Appendix B, paragraph B1 is deleted and replaced with the following paragraph.
B1. TETRIDYN represents and warrants that it will meet the established
financial objective of receiving financial or equivalent capital
commitments recommended for a BBWI spinout company of One Million Five
Hundred Thousand dollars (US $1,500,000). If BBWI determines that
during the first twelve months period after the EFFECTIVE DATE,
TETRIDYN does not have such amount of capitalization (using generally
accepted accounting practices), then BBWI may, at its sole discretion,
terminate this agreement by providing written notice to TETRIDYN.
TETRIDYN agrees further that said capital would be used exclusively for
normal business of a business entity engaged in commercialization of
the Licensed Technology (as defined in Appendix A).
This will extend the financial review period to October 16, 2002. Based on
information presented by TetriDyn yesterday, we intend to review the funding
status again during mid- to late-July. At that midpoint review, BBWI will expect
to see substantial progress on the equity (capital) investment in TetriDyn as
discussed in our meeting.
Please indicate your agreement with this action by signing below and returning
one signed original to me.
Sincerely,
/s/ Xxxxx X. Xxxxx Agreed: /s/ Xxxxx Xxxxxxxxx
------------------------------------------ ---------------------------------
Xxxxx J, Frost, Director Xxxxx Xxxxxxxxx, President
Technology Transfer and Commercialization TETRIDYN Solutions, Inc.
Cc: Xxxxxxx Xxxxxxxx, BBWI
15
