Agreement # _____________________ License Agreement between Solterra Renewable Technologies, Inc. and William Marsh Rice University Rice Agreement # ___________________ Effective Date: _____________________ Solterra Renewable Technologies, Inc.
Exhibit
10.1
Agreement
# _____________________
between
Solterra
Renewable Technologies, Inc.
and
Xxxxxxx Xxxxx Xxxx University
Rice
Agreement # ___________________
Effective
Date: _____________________
Solterra
Renewable Technologies, Inc.
1
THIS
LICENSE AGREEMENT (“Agreement”), with an Effective Date of August 20, 2008, is
entered
into by Xxxxxxx Xxxxx Xxxx University, a Texas non-profit
corporation with a principal address at 0000 Xxxx
Xxxxxx, Xxxxxxx, XX 00000 (“Rice”), and Solterra Renewable Technologies,
Inc., a Delaware corporation,
with a principal address of 0000 Xxxxx Xxxxxx Xxxxxx, Xxxxx 000, Xxxxxxxxxx,
XX 00000 (“Licensee”).
R
E C I T A L S:
WHEREAS,
Rice is the owner of certain inventions, know-how and rights pertaining to
the
synthesis of uniform nanoparticle shapes with high selectivity, including
without limitation all rights pursuant
to the patent applications and issued patents listed in Exhibit A; and,
WHEREAS,
Licensee desires to secure the exclusive right and license to use, develop,
manufacture, market, and
exploit the inventions disclosed and claimed in the patent applications and
issued patents in Exhibit A; and,
WHEREAS,
Rice believes that such use, development and exploitation of the inventions
disclosed and claimed
in the patent applications and issued patents in Exhibit A is in the public's
best interest and is consistent
with Rice's educational and research missions and goals.
NOW,
THEREFORE, in consideration of the foregoing, the provisions set forth herein
and the mutual benefits
to be derived herefrom, and for other good and valuable consideration, the
receipt and sufficiency of which are
hereby acknowledged, Rice and Licensee, hereby agree as follows:
SECTION
1 Definitions
1.1
“Adjusted Gross Sales” means the cash consideration or Fair Market Value of any
non-cash consideration
attributable to the Sale of any Rice Licensed Product(s), less qualifying costs
directly attributable
to such Sale and actually identified on the invoice and borne by the seller.
Such qualifying
costs shall be limited to the following:
a)
Discounts, in amounts customary in the trade for quantity
purchases;
b)
Credits or refunds, not exceeding the original invoice amount, for claims or
returns;
c)
Transportation insurance premiums;
d)
Outbound transportation expenses; and/or
e) Sales,
or use taxes, or duties imposed by a governmental agency paid by or on behalf of
seller,
other than any non-U.S. taxes or duties paid by or on behalf of Licensee as
described in
Section 11 below.
1.2
“Confidential Information” means all information that is of a confidential and
proprietary nature to Rice,
including without limitation Rice Patents and related technology. Solterra Renewable Technologies, Inc.
2
1
1.3
“Effective Date” means the date first written above on which this Agreement is
deemed to take effect and both
Parties become subject to the rights and obligations set forth
herein.
1.4
“Entity” means a corporation, an association, a joint venture, a partnership, a
trust, a business, an institution,
an individual, a government or political subdivision thereof, including an
agency, or any other
organization that can exercise independent legal standing.
1.5 “Fair
Market Value” means the cash consideration which one would realize from an
unaffiliated, unrelated
buyer in an arm's length sale of an identical item sold in the same quantity,
under the same terms,
and at the same time and place.
1.6
“Field of Use” means the manufacture and sale of photovoltaic cells and the
manufacture and sales of quantum
dots for electronic and medical applications.
1.7
“Insolvent” means as to Licensee the circumstance in which either
(a) the
sum of the Licensee's debts,
liabilities and other obligations is greater than all of the Licensee's assets
at a fair valuation,
(b)
Licensee
is generally not paying its debts, liabilities and other obligations as they
become due, or
(c) Licensee
is not able to make reasonable assurances to Rice that Licensee will be able to
pay its debts, liabilities
and other obligations as they become due.
1.8
“Liquidity Event” means (i) any merger or consolidation of Licensee with another
entity (other than one in
which stockholders of the Licensee own a majority by voting power of the
outstanding shares of the
surviving or acquiring corporation); (ii) a sale, lease, transfer or other
disposition of all or substantially
all of the assets of the Licensee; and (iii) the closing of a firm commitment
underwritten initial
public offering of common stock of Licensee.
1.9
“Party” shall mean Rice or Licensee individually, and “Parties” shall mean Rice
and Licensee collectively.
1.10
“Rice Intellectual Property” means the Rice Patents.
1.11
“Rice Licensed Product(s)” means product(s) whose manufacture, use or sale is
covered in whole or in part
by any claim of the Rice Patents; product(s) which are made in whole or in part
using a process
or machine covered in whole or in part by a claim of the Rice Patents; or
product(s) made, at least in
part, using Rice Intellectual Property. Rice Licensed Product(s) shall also
include any service rendered
in whole or in part through the use of a product, process or machine covered in
whole or in part by
any claim of any of the Rice Patents or enabled by Rice Intellectual
Property.
1.12
“Rice Patent(s)” are those United States patent applications and issued patents
listed in Exhibit A hereto
and any corresponding foreign patent applications and issued patents, and any
divisionals, continuations,
reissues and reexaminations to the extent that the claims are directed to
subject matter within
the Field of Use.
1.13
“Sale” means any bona fide transaction for which cash or non-cash consideration
is received or expected
for the sale, use, lease, import, transfer or other disposition of Rice Licensed
Product(s). A Sale of
Rice Licensed Product(s) shall be deemed completed at the time Licensee
invoices, ships, or receives
payment for such Rice Licensed Product(s), whichever occurs first. Solterra Renewable Technologies, Inc.
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1.14
“Term” means the term of this Agreement which shall commence on the Effective
Date and continue until the
date of expiration of the last to expire of Rice’s rights in Rice Intellectual
Property, unless sooner
terminated pursuant to the terms of this Agreement.
1.15
“Territory” means world-wide.
2
SECTION
2 License Grant
2.1 Grant
of Exclusive Rights. Rice grants to Licensee an exclusive license under the Rice
Intellectual Property
listed in Exhibit A, to make, have made, use, import, offer for sale, sell,
lease, or otherwise transfer
Rice Licensed Products in the Field of Use in the Territory , without the right
to sub-license, during
the Term of this Agreement subject to Rice’s rights set forth in Sections 2.4,
and 7 and to any federal
government interest reserved or granted to the Government of the United States
as a matter of law or
statute, or to a foreign state pursuant to an existing or future treaty with the
United States. No other
rights or licenses are granted hereunder.
2.2
Additional Licenses. A license in any other territory or field of use in
addition to the Territory and/or Field of
Use shall be the subject of a separate agreement and shall require Licensee’s
submission of evidence,
satisfactory to Rice, demonstrating Licensee’s willingness and ability to
develop and commercialize
in such other territory and/or field of use the kinds of products or processes
likely to be
encompassed in such other territory and/or field.
2.3 U.S.
Manufacturing. Licensee agrees that any Rice Licensed Products made, used, or
sold in the United
States will be manufactured substantially in the United States.
2.4
Rice’s Continuing Educational and Research Rights.
a)
Notwithstanding the grant of rights to Licensee in Section 2.1, Licensee
acknowledges that Rice
shall retain a continuing irrevocable worldwide right to use Rice Intellectual
Property on a
non-exclusive royalty-free basis for any purpose, including, but not limited to,
the right to make,
have made, use or transfer or to authorize the make, use, or transfer of Rice
Licensed
Product(s), in each case, for educational and research purposes only, including,
but
not
limited to, third party sponsored research and collaborations with investigators
from other
institutions or government agencies and grant to others non-exclusive licenses
to make and use
for academic research purposes the subject matter described and claimed in Rice
Patent
Rights. Licensee further acknowledges that the scope of Rice’s continuing rights
includes
the right to publish and disclose any research results related to any of the
foregoing.
b) Rice
shall have the right to use, free of charge, any product or process, developed
by Licensee
which contains or is based on any Rice Licensed Product, for Rice research,
educational,
academic or administrative purposes.
c) No
provision of this Agreement shall restrict Rice’s ability to conduct further
research and development
in the area of the Rice Licensed Products or other areas.
SECTION
3 Fees, Royalties and Commercial Obligations
3.1
License Initiation Fee and Royalties. Solterra Renewable Technologies, Inc.
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a) In
partial consideration of the exclusive license granted herein, Licensee shall
pay to Rice, a non-refundable,
non-creditable, license initiation fee of US $40,000.00 (FORTY THOUSAND
US DOLLARS) payable within five business days after Solterra receives
initial
funding, and no later than September 2, 2008.
b) In
further consideration of the exclusive license granted herein, Licensee shall
pay to Rice a royalty
calculated as a percentage of Adjusted Gross Sales attributed to Licensee
(“Royalty”)
according to the following schedule:
For
photovoltaic cells:
Royalty
From the
Effective Data to July 31, 2011 2%
From
August 1, 2011 to July 31, 2012 3%
From
August 1, 2012 and thereafter 4%
For
quantum dots sold into electronic and medical applications:
Royalty
From the
Effective Date 7.5%
3
c) In the
event that a Rice Licensed Product(s) is sold in combination with another
product which is
itself not a Rice Licensed Product(s), Adjusted Gross Sales shall be calculated
by multiplying
the sales price of such combination Sale by the fraction A/(A+B) where A is the
Fair
Market Value of the Rice Licensed Product(s) and B is the Fair Market Value of
the other
product in the combination Sale. In no case shall royalties due to Rice be less
than 50% of
the corresponding Royalty as listed above.
d)
Royalties and other amounts payable by Licensee to Rice under this Section 3.1
shall accompany
reports as set forth in Section 3.4 below.
3.2
Success Fee. Upon the occurrence of a Liquidity Event, Licensee shall pay Rice a
Success Fee of US
$700,000.00 (SEVEN HUNDRED THOUSAND US DOLLARS) dollars due within 5
business
days of the Liquidity Event.
3.3
Diligence Milestones and Annual Minimum Royalties.
a)
Licensee shall pay Rice a minimum royalty each year (“Annual Minimum Royalty”),
payable on August
1 of each year. The Annual Minimum Royalty shall be credited against the
Royalties
due in the forthcoming 12 months. Licensee shall pay Rice Annual Minimum
Royalties
according to the following schedule:
| Due Date | Annual Minimum Royalty | |
| August 1, 2010 | $129,450.00 | |
| August 1, 2011 | $473,250.00 | |
| August 1, 2012 | $1,746,000.00 | |
| August 1, 2013 and each August 1 of every year thereafter | $3,738,600.00 | |
These
Annual Minimums are creditable towards Royalties due in the forthcoming 12
months only.
Solterra Renewable Technologies, Inc.
5
b) The
Annual Minimum Royalties will be adjusted by the cumulative percentage change in
the CPI-W
Consumer Price Index between August and the July preceding the date on which the
payment
in question is payable.
c)
Licensee shall use its best efforts to develop for commercial use and to market
Rice Licensed Product(s)
as soon as practicable, consistent with sound and reasonable business practices.
Licensee
shall also meet the milestones set forth in Exhibit B.
d)
Licensee shall provide Rice on each June 1 and December 1 during the Term of
this Agreement
with written reports, setting forth in such detail as Rice may reasonably
request, the
progress of the research and development, evaluation, testing, regulatory
approvals, manufacturing,
marketing and sales and commercialization of any Rice Licensed Product(s)
(“Progress
Reports”) for the most recent time period and plans for the forthcoming year. If
multiple
technologies are covered by the license granted hereunder, the Progress Report
shall provide
the information set forth above for each technology. If progress differs from
that anticipated
in the plan required under Exhibit B, Licensee shall explain the reasons for the
difference
and propose a modified research and development plan for Rice’s review and
approval.
Licensee shall also provide any reasonable additional data Rice requires to
evaluate
Licensee’s performance. Licensee shall also notify Rice within thirty (30) days
of the first
commercial Sale each type of Rice Licensed Product(s) in each country.
e) At any
time after three (3) years from the Effective Date of this Agreement, Rice may
terminate
or render this license non-exclusive in whole or in part as appropriate, if in
Rice’s reasonable
judgment, the Progress Reports furnished by Licensee do not demonstrate that
Licensee:
1. Has
put the licensed subject matter into commercial use in the country or countries
hereby licensed
directly or through a sublicense, and is keeping the licensed subject matter
reasonably
available to the public; or
2. Is
engaged in research, development, manufacturing, marketing or sublicensing
activity appropriate
to achieving the milestones set forth in Exhibit B.
3.4
Royalty Reports and Royalty Payments. Licensee shall deliver to Rice within
forty-five (45) days after the
end of each calendar quarter, any part of which is within the Term of this
Agreement, a written
report, certified by the chief financial officer of Licensee and setting forth
in reasonable detail the
calculation of the royalties due to Rice for such calendar quarter, including,
without limitation:
a) Number
of Rice Licensed Product(s) sold, listed by country in which the Sale
occurred;
b) Type
of Rice Licensed Product sold and corresponding Rice Patent(s) involved with
each Rice
Licensed Product
4
c)
Adjusted Gross Sales listed by country in which the Sale occurred;
and
d)
Payments owed to Rice, listed by category, including without limitation,
royalties on Sales, including
the relative Fair Market Values attributable to Rice Licensed Product(s).
Solterra Renewable Technologies, Inc.
6 Licensee
shall accompany each report of this Section 3.4 with the payment of amounts due
to Rice; provided
however, if Licensee has not received the consideration due for a Sale, then
amounts due to Rice with
respect to such unreceived consideration will be payable by Licensee to Rice
upon receipt thereof
by Licensee. If no amounts are due to Rice for any reporting period, the report
shall so state.
3.5
Records. Licensee will maintain complete and accurate books and records that
enable the royalties payable
hereunder to be verified. The records for each calendar quarter shall be
maintained for five (5) years
after the submission of each report under Section 3.4 hereof.
3.6
Audits.
a) Upon
reasonable prior notice to Licensee, Rice or its appointed accountants shall
have access to such
books and records relating to Adjusted Gross Sales as necessary to conduct a
review or audit
of Adjusted Gross Sales. Such access shall be available to Rice not more than
once each
calendar year of the Term of this Agreement, during normal business hours, and
once a year for
three years after the expiration or termination of this Agreement. If an audit
of
Licensee’s
records indicate that Licensee has underpaid royalties by five percent (5%) or
more,
Licensee will pay the costs and expenses incurred by Rice and its accountants,
if any, in
connection with the review or audit.
b)
Whenever Licensee has its books and records audited by an independent certified
public accountant,
Licensee shall, within thirty (30) days of the conclusion of such audit, provide
Rice with
a written statement, certified by said auditor, setting forth the calculation of
royalties
due to Rice over the time period audited as determined from the books and
records of the
Licensee.
c)
Licensee shall have its financial statements audited by nationally or regionally
recognized qualified
auditors on an annual basis during the Term of this Agreement and will deliver a
copy of
such audited financial statements and any accompanying auditor’s report to
Rice within
ninety (90) days after the end of each of Licensee’s fiscal years, any part of
which are within
the Term of this Agreement.
3.7
Country, Place of Payment, Interest.
a) All
dollar amounts referred to in this Agreement are expressed in United States
dollars and all
payments to Rice shall be made in United States dollars by check payable to
“Xxxxxxx Xxxxx
Xxxx University.”
b)
Amounts that are not paid when due hereunder shall accrue interest from the due
date until paid, at
a rate equal to one and one-half percent (1.5%) per month (or the maximum
allowed by law,
if less).
SECTION
4 Patent Expenses and Reimbursement
4.1 Rice
shall work closely with Licensee to develop a suitable strategy for the
prosecution and maintenance
of Rice Patents; provided that Rice shall maintain final authority in all
decisions regarding
the prosecution and maintenance of Rice Patents. Licensee shall promptly
reimburse Rice for all
documented attorneys' fees, expenses, official fees and other charges incident
to the preparation,
prosecution and maintenance of Rice Patents pursuant to the strategy developed
by Rice Solterra Renewable Technologies, Inc.
7 in
consultation with Licensee, including all patent expenses incurred by Rice
related to the prosecution
and maintenance of Rice Patents prior to the Effective Date of this Agreement..
Licensee
shall not be liable for fees and expenses associated with the preparation,
prosecution and maintenance
of Rice Patents that Licensee has specifically advised Rice in writing that it
does not desire to
pursue. Licensee may elect to surrender Rice Patent Rights in any country upon
at least sixty
(60) days’ prior written notice to Rice. Such notice shall not relieve Licensee
from responsibility
to reimburse Rice for patent-related expenses incurred prior to the expiration
of the sixty
(60) day notice period (or such longer period specified in Licensee’s notice).
Rice shall provide Licensee
with itemized statements reflecting the expenses owed to Rice for the
preparation,
prosecution
and maintenance of Rice Patents, and Licensee shall reimburse Rice for such
expenses within
thirty (30) days after receipt of such statement.
4.2 Rice
shall confer with Licensee regarding choice of patent counsel. Although Rice
shall maintain final
authority in all decisions regarding patent counsel selection, it is intended
that both Rice and Licensee
will interact directly with the selected patent counsel in all phases of patent
prosecution: preparation,
office action responses, filing strategies for continuation or divisional
applications, etc. Rice will
request that copies of all documents prepared by the counsel be provided to
Licensee for review
and comment prior to filing to the extent practicable under the circumstances.
4.3 Rice
shall confer with Licensee as to the countries in which Licensee desires Rice to
seek patent protection.
Licensee shall, upon request by Rice, provide Rice or its authorized
representative with any
information needed to file or prosecute such patent application and will execute
and deliver to Rice all
documents required to file and prosecute such patent application. Should Rice
elect not to apply for
patent protection in a country desired by Licensee, Rice shall use reasonable
efforts to give Licensee
written notice of its decision at least thirty (30) days prior to the applicable
deadline for such
foreign filing.
4.4
Licensee shall comply with all United States and foreign laws with respect to
patent and copyright marking
of Rice Licensed Product(s).
5
4.5 Each
party shall provide to the other prompt notice with respect to all matters that
come to its attention
that may affect the preparation, prosecution or maintenance of any Rice Patents
or Rice Copyrights.
In particular, licensee must immediately notify Rice if Licensee does not
qualify as a “small
entity” as provided by the United States Patent and Trademark
Office.
SECTION
5 Term and Termination
5.1 This
Agreement, unless sooner terminated as provided herein, shall terminate at the
end of the Term of this
Agreement as defined in Section 1.16.
5.2
Licensee, at its option, may terminate this Agreement at any time by doing all
of the following:
a) By
ceasing to make, have made, use and sell any Rice Licensed
Product(s);
b) By
giving sixty (60) days prior written notice to Rice of such cessation and of
Licensee's intent to
terminate; and
c) By
tendering payment of all accrued royalties and other payments due to Rice.
Solterra Renewable Technologies, Inc.
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5.3 Rice,
at its option, may terminate this Agreement, upon written notice to Licensee of
Rice's intent to terminate,
if any of the following occur:
a)
Licensee has not met a milestone set forth in Exhibit B; or
b)
Licensee ceases development, marketing, sales or other commercialization efforts
with regard to Rice
Licensed Product(s) in the Field of Use; or
c)
Licensee becomes more than fifteen (15) days in arrears in any payments, fees or
other expenses due
pursuant to this Agreement; or
d)
Licensee breaches this Agreement, other than being in arrears in payments, fees
or other expenses,
and does not cure such breach within forty-five (45) days after receiving
written notice thereof
from Rice.
e) If, at
any time after three years from the date of this Agreement, Rice determines that
the Agreement
should be terminated pursuant to Section 3.3(d).
f) An
examination by Rice’s accountant pursuant to Section 3.6 shows an underreporting
or underpayment
by LICENSEE in excess of twenty (20%) for any twelve (12) month period.
g)
Licensee, or any of its officers, is convicted of a felony relating to the
manufacture, use, or sale of Rice
Licensed Products.
h)
Licensee provides any false report, which has not been corrected within thirty
(30) days after written
notice thereof by Rice or within thirty (30) days after Licensee becomes aware
that false information
has been provided, whichever occurs earlier.
5.4 If
Licensee becomes Insolvent, all duties of Rice and all rights (but not duties)
of Licensee under this Agreement
shall immediately terminate without the necessity of any action being taken by
Rice or by Licensee.
In addition, if Licensee becomes Insolvent, Rice, at its option, may terminate
this Agreement
immediately upon written notice to Licensee.
6
5.5 Upon
termination of this Agreement, except under Section 5.1, Licensee shall have
ninety (90) days to
complete the manufacture of work in progress and one hundred eighty (180) days
to complete the sale of
any Rice Licensed Product(s) in stock or in the course of manufacture at the
time of termination;
provided, however, that all such Sales are subject to the royalty and accounting
obligations
set forth in this Agreement, even if such royalty obligations arise from
transactions subsequent
to the effective date of termination.
5.7 Upon
termination of this Agreement, except under Section 5.1,
Licensee shall, at Rice's request, return to
Rice all Confidential Information and Rice Technical Information fixed in any
tangible medium of
expression, as well as any data generated by Licensee during the term of this
Agreement which
will facilitate the development of any technology licensed hereunder.
5.8
Licensee's obligation to pay royalties accrued during the Term of this Agreement
under Section 3 hereof
shall survive termination of this Agreement. For the avoidance of doubt, the
parties acknowledge
and agree that in no event shall the termination of this Agreement release
Licensee from the
obligation to pay any amounts that become due on or before the effective date of
termination Solterra Renewable Technologies, Inc.
9 under
Sections 3, 4, 7, and 8. In addition, the provisions of Sections 3.6, 3.7, 5, 6,
7, 8, 9, 11, 12 and 13 shall survive any termination or
expiration of this Agreement, and each Party shall remain obligated
under any
other provisions that expressly or by their nature survive any expiration or
termination of this Agreement.
5.9
Licensee may terminate this Agreement by giving ninety (90) days advance written
notice of termination
to Rice and paying a termination fee of US $100,000.00 dollars (ONE HUNDRED
THOUSAND
US DOLLARS). Upon termination, Licensee shall submit a final Royalty Report to
Rice and
any royalty payments and unreimbursed patent expenses invoiced by Rice shall
become immediately
payable.
SECTION
6 Confidentiality
6.1
Licensee agrees to maintain in confidence and not to disclose to any third party
any Confidential Information
received pursuant to this Agreement, including any Confidential Information
disclosed to Licensee
prior to the Effective Date; provided however, that Confidential Information may
be disclosed
to legal counsel or, upon execution of an appropriate confidentiality agreement,
to corporate
partners or potential corporate partners, investment bankers or consultants.
Licensee agrees to ensure
that its employees have access to Confidential Information only on a
need-to-know basis and that
they are obligated in writing to abide by Licensee's obligations hereunder. The
foregoing obligation
shall not apply to:
a)
Information that is known to Licensee prior to the time of disclosure, in each
case, to the extent evidenced
by written records promptly disclosed to Rice upon receipt of the Confidential
Information;
b)
Information disclosed to Licensee by a third party that has a right to make such
disclosure without
any obligation of confidentiality;
c)
Information that is independently developed by Licensee by employees not having
access to or knowledge
of Confidential Information, in each case, to the extent evidenced by written
records disclosed
to Rice;
d)
Information that becomes patented, published or otherwise part of the public
domain as a result of acts
by Rice, or a third person obtaining such information as a matter of right
without any obligation
of confidentiality;
e)
Information that is required to be disclosed by order of United States
governmental authority or a court of
competent jurisdiction; provided that Licensee shall use its best efforts to
obtain confidential
treatment of such information by the authority or court.
6.2 Rice
shall not be obligated to accept or protect any confidential information from
Licensee unless provided
for in a separate agreement between the Parties.
6.3 The
placement of a copyright notice on any Confidential Information shall not be
construed to mean that such
information has been published and will not release Licensee from its obligation
of confidentiality
hereunder.
SECTION
7 Infringement and Litigation
Solterra Renewable Technologies, Inc.
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7
7.1 Rice
and Licensee are responsible for notifying each other promptly of any
infringement of Rice Intellectual
Property or any misappropriation of Rice Confidential Information or Rice
Technical Information
that may come to their attention. Rice and Licensee shall consult one
another in a timely manner
concerning any appropriate response thereto.
7.2 With
respect to any Rice Patents that are exclusively licensed to Licensee pursuant
to this Agreement, Licensee
shall have the right, but not the obligation to prosecute in its own name such
infringement or
misappropriation at its own expense, so long as such license is exclusive at the
time of the commencement
of such action. Before Licensee commences an action with respect to any
infringement
of such patents, Licensee shall give careful consideration to the views of Rice
and to potential
effects on the public interest in making its decision whether or not to xxx.
Licensee shall not settle or
compromise any such suit in a manner that imposes any obligations or
restrictions on Rice or
grants
any rights to Rice Intellectual Property, without Rice's advance written
consent. Financial recoveries
from any such litigation will first be applied to reimburse Licensee and Rice
for its outside counsel
fees and court costs with additional recoveries being shared equally by Licensee
and Rice.
7.3
Licensee’s prosecution rights under Section 7.2 shall be subject to the
continuing right of Rice to intervene
at Rice's own expense and join Licensee in any claim or suit for infringement or
misappropriation
of Rice Intellectual Property. If Rice elects to join as a party, Rice shall
jointly control
the action with Licensee. Licensee shall reimburse Rice for any costs Rice
incurs, including reasonable
attorneys’ fees, as part of an action brought by Licensee, irrespective of
whether Rice becomes a
co-plaintiff. Any financial recoveries shall first be applied to reimburse
Licensee and Rice for their
outside counsel fees and court costs with any remainder being shared equally
between Rice
and
Licensee.
7.4 If
Licensee fails to prosecute such infringement or misappropriation, Rice shall
have the right, but not the
obligation, to prosecute such infringement or misappropriation at its own
expense. In such event, financial
recoveries will be entirely retained by Rice.
7.5 In
any action to enforce any of the Rice Intellectual Property, either Party, at
the request and expense of the
other Party, shall cooperate to the fullest extent reasonably possible. This
provision shall not be
construed to require either Party to undertake any activities, including legal
discovery, at the request
of any third party except as may be required by lawful process of a court of
competent jurisdiction.
7.6 If a
declaratory judgment action is brought naming Licensee or Rice as a defendant
and alleging invalidity
or unenforceability of any of the Rice Patents, whether brought as an
independently filed declaratory
judgment action or as a counterclaim in any infringement-related litigation,
Rice may elect to
take over the sole defense of the declaratory judgment action or the declaratory
judgment counterclaim
portion of the other litigation, at its own expense. Each party shall promptly
notify the other
party hereto of its receipt of any such allegations. Licensee shall cooperate
fully with Rice in connection
with any such defense. Rice retains the right, exercisable in the sole
discretion of Rice
and upon
advance notice to Licensee, to grant non-exclusive licenses under the Rice
Patents in the Field of
Use to third parties as a means to resolve such declaratory judgment actions or
counterclaims.
Rice shall also have the right to grant non-exclusive licenses under the Rice
Patents in the
Field of Use to third parties as a means to resolve or settle claims, suits or
proceedings arising out of
allegations that Rice or any of its employees have, through their work related
to nanotechnology,
infringed the intellectual property rights of others. If Rice grants any
non-exclusive Solterra Renewable Technologies, Inc.
11 license
under the terms of this Section, the economic terms of this Agreement will be
adjusted to account
for the reduction in the scope of rights granted to Licensee. Nothing in this
Section 7.6 shall be
construed as obligating Rice to resolve any dispute or to settle or defend any
claim, suit or proceeding
arising out of Licensee’s manufacture, use or sale of Rice Licensed
Products.
7.7 In
the event that Licensee does challenge the validity or enforceability of one or
more of the Rice Patents
(or any claims therein), Rice may, at its option, upon written notice to
Licensee: (1) terminate
this Agreement or (2) require an augmented royalty of up to three times the
Royalties payable
under Section 3.1. Such challenge of validity or enforceability includes, but is
not limited to, actions
before the United States Patent and Trademark Office, such as through
reexamination. Any challenge
by Licensee of the Patents shall be brought in the United States District Court
in Xxxxxx County,
Texas, or, when appropriate, the United States Patent and Trademark Office, with
at least
thirty
(30) days written notice to Rice. Licensee shall pay all of Rice’s reasonable
attorneys' fees, costs,
and expenses associated with an unsuccessful challenge. A challenge shall be
deemed unsuccessful
if any claim of a challenged Rice Patent remains valid and enforceable after the
challenge
(even when the claim is narrowed in scope). Under no circumstance shall Rice pay
any of Licensee's
attorneys' fees, costs, and expenses related to any challenge of one or more of
the Rice Patents.
7.8
Non-assert. Licensee and Rice agree that Licensee shall not assert Rice
Intellectual Property infringement
claims against not-for-profit research institutions for activities related to
research, teaching,
education, or academic purposes.
8
SECTION
8
Disclaimer
of Warranty; Limitation of Liability; Indemnification
8.1
THE RICE INTELLECTUAL PROPERTY, AND ANY OTHER INFORMATION OR TECHNOLOGY
PROVIDED BY RICE AND USED IN THE MANUFACTURE, USE, IMPORT,
SALE, OFFER FOR SALE, LEASE, OR OTHER TRANSFER OF RICE LICENSED
PRODUCT(S) ARE PROVIDED ON AN “AS IS” BASIS AND RICE MAKES NO REPRESENTATIONS
OR WARRANTIES, EXPRESS OR IMPLIED, WITH RESPECT THERETO.
BY WAY OF EXAMPLE BUT NOT OF LIMITATION, RICE MAKES NO REPRESENTATIONS
OR WARRANTIES (I) OF COMMERCIAL UTILITY, (II) OF MERCHANTABILITY
OR FITNESS FOR A PARTICULAR PURPOSE, OR (III) THAT THE USE
OF THE RICE INTELLECTUAL PROPERTY, OR RICE LICENSED PRODUCT(S) WILL
NOT INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK, OR OTHER PROPRIETARY
OR PROPERTY RIGHTS OF OTHERS.
8.2
IN NO EVENT SHALL RICE BE LIABLE TO LICENSEE, LICENSEE'S SUCCESSORS OR
ASSIGNS
OR ANY THIRD PARTY WITH RESPECT TO ANY CLAIM (I) ARISING FROM THE
USE OF THE RICE INTELLECTUAL PROPERTY, (II) ARISING FROM THE MANUFACTURE,
USE, IMPORT, OR SALE OR OFFER FOR SALE, LEASE OR OTHER TRANSFER
OF RICE LICENSED PRODUCT(S), (III) FOR LOSS OF PROFITS, LOSS OR
INTERRUPTION
OF BUSINESS, OR (IV) FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL,
SPECIAL, EXEMPLARY OR PUNITIVE DAMAGES OF ANY KIND.
8.3
LICENSEE SHALL INDEMNIFY, DEFEND, AND HOLD HARMLESS RICE, ITS TRUSTEES,
OFFICERS, AGENTS, SUBCONTRACTORS, STUDENTS AND EMPLOYEES (INDIVIDUALLY,
AN “INDEMNIFIED PARTY”, AND COLLECTIVELY, THE “INDEMNIFIED
PARTIES”) FOR, FROM AND AGAINST ANY AND ALL LIABILITY,
Solterra Renewable Technologies, Inc.
12
LOSS,
DAMAGE, ACTION, CLAIM OR EXPENSE SUFFERED OR INCURRED BY THE INDEMNIFIED
PARTIES (INCLUDING, BUT NOT LIMITED TO, ATTORNEYS’ FEES AND
OTHER COSTS AND EXPENSES OF LITIGATION) (INDIVIDUALLY, A “LIABILITY”,
AND COLLECTIVELY, THE “LIABILITIES”) BASED UPON, ARISING OUT
OF, OR OTHERWISE RELATING TO THIS AGREEMENT, INCLUDING WITHOUT
LIMITATION
ANY CAUSE OF ACTION RELATING TO PRODUCT LIABILITY CONCERNING
ANY BREACH OF THIS AGREEMENT BY LICENSEE, USE OF THE RICE
PATENT RIGHTS GRANTED UNDER THIS AGREEMENT BY LICENSEE, OR RICE
LICENSED PRODUCT MANUFACTURED,, USED, IMPORTED, SOLD OR OFFERED
FOR SALE, LEASED, TRANSFERRED OR OTHERWISE DISPOSED OF PURSUANT
TO ANY RIGHT OR LICENSE GRANTED UNDER THIS AGREEMENT.
8.4
The Indemnified Party shall promptly notify Licensee of any claim or action
giving rise to Liabilities.
Licensee shall have the right to defend any such claim or action, at its cost
and expense
with attorneys satisfactory to Rice. Licensee shall not settle or
compromise any such claim
or action in a manner that imposes any restrictions or obligations on Rice or
grants any rights
to the Rice Intellectual Property or Rice Licensed Product(s) without Rice's
prior written consent.
If Licensee fails or declines to assume the defense of any such claim or action
within thirty
(30) days after notice thereof, or if representation of such Indemnified Party
by the counsel
retained by Licensee would be inappropriate because of actual or potential
differences in
the interests of such Indemnified Party any other party represented by such
counsel, Rice may
assume the defense of such claim or action for the account and at the risk of
Licensee, and any
liabilities related thereto shall be conclusively deemed a liability of
Licensee. Licensee shall pay
promptly to the Indemnified Party any Liabilities to which the foregoing
indemnity relates,
as
incurred. The indemnification rights of Rice or any other Indemnified Party
contained herein
are in addition to all other rights which Rice or such other Indemnified Party
may have at
law or in equity or otherwise.
SECTION
9 Insurance
9.1
Licensee shall procure and maintain in full force and effect, throughout the
Term of this Agreement, commercial
general liability insurance for a minimum amount of $5,000,000 per occurrence
and $5,000,000
in the aggregate. Such commercial general liability insurance shall provide: (i)
product liability
coverage; and (ii) broad form contractual liability coverage for Licensee’s
indemnification obligations
under this Agreement. Licensee shall maintain such commercial general liability
insurance
after the expiration or termination of this Agreement during any period in which
Licensee continues
to make, use, perform or sell a product that was a Rice Licensed Product under
this
Agreement,
and thereafter for a period of five (5) years.
9.2 Rice
reserves the right to request additional policies of insurance where appropriate
and reasonable in light of
Licensee’s business operations and availability of coverage.
9.3 The
policy or policies of insurance specified herein shall be issued by an insurance
carrier with an A.M. Best
rating of “A” or better and shall name Rice as an additional insured with
respect to Licensee's
performance of this Agreement. All rights of subrogation shall be waived against
Rice and its
insurers. Licensee shall, upon request by Rice, provide Rice with certificates
evidencing the insurance
coverage required herein and all subsequent renewals thereof. Such certificates
shall Solterra Renewable Technologies, Inc.
13 provide
that Licensee's insurance carrier(s) notify Rice in writing at least 30 days
prior to a cancellation
or material change in coverage.
9.4 The
specified minimum insurance amounts shall not constitute a limitation on
Licensee's obligation to
indemnify Rice under this Agreement.
9
SECTION
10 Use of Names; Independent Contractor
10.1
Licensee and its employees and agents shall not use Rice's name, any adaptation
thereof, any Rice logotype,
trademark, service xxxx or slogan or the name xxxx or logotype of any Rice
faculty, staff, student
representative or organization in any way without the prior, written
consent of Rice.
10.2 Rice
shall permit Licensee to acknowledge that Licensee has entered into an exclusive
license for rights to
certain technology developed at Rice.
10.3
Licensee and Rice intend that their relationship under this Agreement shall be
as independent contractors,
and neither Licensee nor Rice shall conduct themselves in a manner inconsistent
with such
independent contractor status. Nothing in this Agreement nor any performance
hereunder is intended,
or shall be construed, to create a partnership, joint venture or other form of
business enterprise,
or relationship of agency or employment, between Licensee and Rice (including,
its faculty,
students and employees). Moreover, neither Party shall have the authority to
enter into contracts
on behalf of the other Party.
SECTION
11 Foreign Taxes
11.1
Licensee shall pay all taxes which may be assessed or levied on, or on account
of, the Rice Licensed Product
made, used, sold, leased, transferred, or disposed of hereunder and all taxes
(other than taxes imposed
by the United States of America or the State of Texas or jurisdictions within
such State) levied on
or on account of the amounts (including royalty payments) payable to, or for the
account of, Rice
University under this Agreement. These taxes are not deductible from any
payments due Rice.
SECTION
12 Notices
12.1 Any
notice or other communication of the Parties required or permitted to be given
or made under this
Agreement shall be in writing and be deemed effective upon receipt if delivered
personally, by reputable
courier, by facsimile with confirmation or electronic transmission with
confirmation, or by certified
or registered mail, postage prepaid, return receipt requested, addressed to the
other Party as follows
(or as changed by written notice pursuant to this Section 11):
If for
Rice:
Office of
Technology Transfer - MS 705
Solterra Renewable Technologies, Inc.
14
Rice
University
0000 Xxxx
Xxxxxx
P. 0. Xxx
0000
Xxxxxxx,
XX 00000-0000
Attn:
Director, Office of Technology Transfer
Phone:
(000) 000-0000
Fax:
(000) 000-0000
Email:
XXX-Xxxxxxxx@xxxx.xxx or xxxxxxxx@xxxx.xxx
If for
Licensee:
Attn:
Phone:
Fax:
SECTION
13 Additional Provisions
13.1
Legal Compliance. Licensee shall comply with all prevailing laws, rules and
regulations pertaining to the
development, testing, manufacture, marketing, sale, use, import or export of
Rice Intellectual Property
and Rice Licensed Product(s). Licensee shall comply with all United States laws
and regulations
controlling the export of certain commodities and technical data, including
without limitation
all Export Administration Regulations under the United States Department of
Commerce and
International Traffic in Arms Regulations under the Department of State. Among
other things, these
laws and regulations prohibit or require a license for the export of certain
types of commodities
and
technical data to specified countries. Licensee hereby gives written assurance
that it will comply with, all
United States export control laws and regulations, that it bears sole
responsibility for any violation
of such laws and regulations by itself and that it will indemnify, defend, and
hold Rice harmless
(in accordance with Section 8.3) for the consequences of any such
violation.
10
13.2
Power and Authority; Due Authorization; No Conflict; Enforceability; Binding
Effect. Each Party represents
and warrants to the other Party that (i) such Party has the power and authority
to execute, deliver
and perform its obligations under this Agreement, (ii) the execution, delivery
and performance of this
Agreement have been duly authorized by such Party and does not and shall not
conflict with any
agreement or instrument to which it is bound, (iii) this Agreement constitutes
the legal, valid and binding
obligation of such Party, enforceable against it in accordance with its terms,
and (iv) this Agreement,
and the interests, rights, duties and obligations hereunder, shall be binding
upon, and inure to
the benefit of, the Parties and their respective successors and permitted
assigns.
13.3
Entire Agreement; Further Assurances. This Agreement, including Exhibits A and B
attached hereto, constitutes
the entire agreement between the Parties, and supersedes any prior or
contemporaneous negotiations,
understandings and agreements, with respect to the subject matter hereof. Each
Party shall
execute and deliver such further documents and take such further actions as may
be required or reasonably
requested by the other Party to effectuate the purposes of this Agreement.
13.4 No
Assignment; No Amendment; No Waiver. This Agreement (i) may not be assigned or
transferred, in whole
or in part, by operation of law or otherwise, by either Party without the prior
written consent Solterra Renewable Technologies, Inc.
15 of the
other Party, and (ii) may not be amended or modified, by course of conduct or
otherwise, except in
a writing duly executed by each of the Parties. Any waiver of any provision of
this Agreement
shall be in writing duly executed by the waiving Party. The failure or delay by
either Party to
seek redress for any breach or default under this Agreement, or to insist upon
the strict performance
of any provision of this Agreement, shall not constitute a waiver thereof or of
any other provision
of this Agreement, and such Party shall have all remedies provided herein and at
law and in equity
with respect to such act and any subsequent act constituting the
same.
13.5
Force Majeure; Remedies Cumulative. In the event either Party's performance
under this Agreement is in any
way prevented or delayed as a result of causes or conditions (other than
financial incapacity to pay)
beyond such Party's reasonable control, such Party shall be excused temporarily
without liability
with respect to such performance or nonperformance; provided, however, that such
Party must
diligently pursue reasonable and appropriate actions to remedy such cause or
condition. The rights
and remedies provided in this Agreement are cumulative in nature and shall be in
addition to any such
other rights and remedies available at law and in equity.
13.6
Resolution of Disputes.
a) In the
event of any dispute or disagreement between the Parties either in interpreting
any provision
of this Agreement or about the performance of either Party and upon the written
request of either
Party, each of the Parties will appoint a designated representative to attempt
to resolve such dispute
or disagreement. The designated representatives will discuss the problem and
negotiate in good
faith in an effort to resolve the dispute without any formal proceedings. The
specific format of such
discussion shall be left to the discretion of the designated representatives. No
litigation for the resolution
of such dispute may be commenced until the designated representatives have met
and either
Party has concluded in good faith that amicable resolution through continued
negotiation does not appear
likely (unless either Party fails or refuses to appoint a designated
representative and schedule
a meeting of such representatives within thirty (30) days after a request to do
so by the other Party).
b) Each
party shall continue to perform its undisputed obligations under this Agreement
pending
final resolution of any dispute arising out of or relating to this Agreement;
provided, however,
that a party may suspend performance of its undisputed obligations during any
period in which the
other party fails or refuses to perform its undisputed obligations. Nothing in
this Section 13.6(b)
is intended to relieve Licensee from its obligation to make undisputed payments
pursuant to Sections
3 and 4 of this Agreement.
11
c) The
parties agree that all applicable statutes of limitation and time-based defenses
(such as estoppel
and laches) shall be tolled while the procedures set forth in Sections 13.6(a)
are pending. The
parties shall cooperate in taking any actions necessary to achieve this
result.
13.7
Governing Law; Jurisdiction and Venue; Attorneys' Fees. This Agreement shall be
governed by, and construed
and enforced in accordance with, the laws of the United States and the laws of
the State of Texas
(without regard to the conflicts or choice of law principles thereof). Licensee
and Rice irrevocably
consent to the jurisdiction of the State of Texas, and agree that any court of
competent jurisdiction
sitting in Xxxxxx County, Texas, shall be an appropriate and convenient place of
venue to resolve
any dispute with respect to this Agreement. In the event either Party commences
any proceeding
against the other Party with respect to this Agreement, the prevailing Party
(as determined by the
authority before whom such proceeding is commenced) shall be entitled to recover
reasonable Solterra Renewable Technologies, Inc.
16 attorneys'
fees and costs as may be incurred in connection therewith in addition to any
such other relief as
may be granted.
13.8
Severability. In the event any provision of this Agreement is determined to be
invalid or unenforceable,
it is the desire and intention of the Parties that such invalidity or
unenforceability not invalidate
or render unenforceable the remainder of the Agreement and that such provision
be reformed
and construed in such a manner that it will, to the maximum extent practicable,
be deemed valid and
enforceable, and the rights and obligations of the Parties shall be construed
and enforced accordingly.
13.9
Construction of Agreement. The Parties acknowledge and agree that both Parties
substantially participated
in negotiating the provisions of this Agreement; therefore, both Parties agree
that this Agreement
shall not be construed more favorably toward one Party than the other
Party, regardless of which
Party primarily drafted the Agreement. The Section and other headings in this
Agreement are for
convenience of reference only and shall not affect, expressly or by implication,
the meaning or interpretation
of any of the provisions hereof.
13.10
Third Party Beneficiaries. Nothing in this Agreement, express or implied, is
intended to confer any benefits,
rights or remedies on any Entity, other than the Parties and their successors
and permitted assigns.
13.11
Counterparts. This Agreement may be executed in multiple counterparts, each of
which shall be deemed an
original, but all of which taken together shall constitute one and the same
instrument. IN
WITNESS WHEREOF the Parties, intending to be legally bound, have caused this
Agreement to be executed
and delivered by their duly authorized representatives and effective as of the
Effective Date.
Xxxxxxx
Xxxxx Xxxx University
Date:
Signature:
Xxxxx X.
Xxxx
Vice
President for
Investments
and Treasurer
Solterra
Renewable Technologies, Inc.
Date:
__________________________
Signature:
Xxxxxxx
X. Xxxxxxx
President
and CEO
Reviewed
and recommended for signature:
Signature:
Xxxx X.
Xxxxxxx
Director,
Office of
Technology Transfer
Solterra Renewable Technologies, Inc.
17
Solterra
Renewable Technologies, Inc.
1
12
Exhibit
A
Rice
Patents
Rice
Tech
ID
Invention
Disclosure
Received
Invention
Disclosure Title Patent Title Filing Date Serial Number Patent Type Country
Xxxxxxxxx Xx
00000
8/31/06 Synthesis of Uniform Nanoparticle Shapes
with High
Selectivity
Synthesis
of Uniform Nanoparticle Shapes
with High
Selectivity
4/13/07
60/911,721 Provisional U.S. Xxxxxxx Xxxx,
Xxxxxxxxx
Xxxxxx
Synthesis
of Uniform Nanoparticle Shapes with high
Selectivity 4/11/08
PCT/US2008/060129 PCT PCT Xxxxxxx Xxxx, Xxxxxxxxx
Xxxxxx On
an “as is” basis as of the Effective Date
13
Exhibit
B
Company
Diligence Milestones
Licensee
shall use best efforts to develop Rice Licensed Products and to introduce
Rice Licensed Products
into the commercial market; thereafter, Licensee shall make Rice Licensed
Products reasonably available
to the public. Specifically, Licensee shall fulfill the following
obligations:
(a)
Licensee shall submit a business plan and/or a technology development to Rice
prior to
the Effective Date of this Agreement.
(b)
Licensee shall acquire $5,000,000 (five million dollars) in initial funding by
August
31, 2008.
(c)
Licensee shall file 3 patent applications related to thin-film quantum dot (QD)
solar
cell technology by December 31, 2008, and 3 additional patent applications
related to thin-film QD solar
cells or printed electronics in general by December 31, 2009.
(d)
Licensee shall fund $80,000 (eighty thousand dollars) (in direct costs) of
sponsored
research with Professor Xxxxxxx Xxxx by October 31, 2008.
(e)
Following the successful completion of the sponsored research goals with
Xxxxxxx
Xxxx, Licensee shall demonstrate the scalability of the quantum dot production
technology by May 31,
2009.
(f)
Licensee shall establish a QD production pilot plant capable of producing 1000
g/week by
December 31, 2009.
(g)
Licensee shall start up a full scale QD production plant by December 31,
2010.
(h)
Licensee shall demonstrate a working model of a thin film quantum dot solar cell
product
using Rice Intellectual Property by July 31, 2009. This working model shall
achieve 6% efficiency
at a manufactured cell cost of <$1.50/Watt, and have a consumer warranty
regarding product lifetime
performance comparable to existing photovoltaics.
(i)
Licensee shall have received an additional investment commitment of at least $15
(fifteen)
million dollars by January 31, 2010.
(j)
Licensee shall bring a 10MW capacity solar cell pilot production line on-stream
by May
31, 2010.
(k)
Licensee shall offer for sale solar cells incorporating a Rice Licensed Product
on or before
June 30, 2010.
(l)
Licensee shall bring a 100 Megawatt volume production facility for solar cells
on stream by
December 31, 2011.
(m)
Licensee shall offer for sale quantum dots manufactured with Rice Patents for
electronic
or medical applications on or before December 31, 2009.
14
