EXHIBIT 10.1
MEMORANDUM OF AGREEMENT
Agreement, dated this 9th day of February, 0000 xxxxxxx xxxXXXX XXXXXXXXXXX, xx
Xxxxxxx, Xxxxxxx and ORAGENICS, INC., of Alachua, Florida.
I. iviGene possesses certain technologies and certain target molecules
identified with its technology.
II. iviGene has received a grant from the National Institutes of Health and has
additional grant applications pending.
III. Oragenics is interested in securing an exclusive license of the iviGene
technologies for specific fields and an assignment of iviGene's rights to the
NIH grant award and grant pending applications.
Therefore, the parties have agreed as follows:
1. iviGene hereby grants to Oragenics an exclusive worldwide license to use,
practice, develop, sublicense and use in any manner the technologies owned by
iviGene, including rights under patent applications filed by iviGene, and
know-how possessed by iviGene. The fields of use under this license include the
diagnosis, prevention, treatment or cure of tuberculosis and cancer; and all
non-human applications of the technology, including plants, animals and
industrial uses. The term of the license will be the later of the last-to-expire
patent covering the iviGene technologies or fifteen years from the date of this
agreement.
2. iviGene hereby assigns its rights to the grant award from the National
Institutes of Health to Oragenics and rights to other grant applications and
agrees to execute all required documents necessary to effect such assignments.
3. iviGene hereby transfers possession of its equipment as described in Exhibit
B to Oragenics for use by Oragenics during the term of the license. Oragenics
agrees to maintain the equipment in good repair and to return all equipment to
27
iviGene in working order upon termination of the license term or when sooner
requested by iviGene at any time after March 1, 2006.
4. Oragenics agrees to pursue development of the licensed technologies toward
commercialization with reasonable diligence. In the event Oragenics abandons
such development of the technologies and fails to resume its diligent effort
within thirty days of notice from iviGene, its license rights shall immediately
become non-exclusive, allowing iviGene to use the technology itself or to
license the technology, patents and know-how to others on a non-exclusive basis.
A commitment of two full-time staff people equivalents or an annual expenditure
of $100,000 in 2004 and $200,000 in each year thereafter shall be conclusive
evidence of diligence on the part of Oragenics.
5. Oragenics agrees to hold informal quarterly meetings with representatives of
iviGene to discuss the progress made in development of the technology and
products.
6. Upon execution of the formal License Agreement or March 1, 2004, whichever
occurs first, Oragenics agrees to assume all patent-related expenses for the
licensed technologies and to assume monthly rent payments incurred after such
date. When iviGene enters into another licensing arrangement or other business
arrangement, Oragenics shall be obligated to pay no more than 50% of patent
costs, effective from the date of such agreement.
7. Oragenics agrees to pay to iviGene the following royalties on net revenues.
Net revenues shall include sub-license fees, milestone payments and royalties
received from third parties for products developed by use of or incorporating
any of the licensed technologies. Funding received by Oragenics that is
specified for research and development use shall be excluded from net revenues.
Net revenues shall also not include revenues received by Oragenics that are
required to be paid to third parties for other enabling licenses.
a. 15% of net revenues received from sales or licensing of products
based upon Mycobacterium tuberculosis targets already identified by iviGene, as
defined in Exhibit A.
b. 8% of net revenues received from all other sales or licensing or
products based upon or incorporating the licensed technologies.
28
8. Oragenics agrees to use its reasonable best efforts to enter into academic
collaborations for use of the licensed technologies with collaborators
identified by representatives of iviGene.
The parties agree that this Memorandum of Understanding shall be binding on the
parties. The terms of this Memorandum shall be incorporated into a formal
Licensing Agreement.
iviGene Corporation Oragenics, Inc.
by /s/ Xxx Xxxxxxxxx-Xxx by /s/ Xxxxx X. Xxxxxxx
-------------------------- ------------------------
Authorized Director its President
29
IVIGENE - ORAGENICS
MEMORANDUM OF AGREEMENT
SCHEDULE A
Re: Section 7a. The pseudomonas targets identified, screened and sequenced by
iviGene and provided to Oragenics.
Re: Section 7b. The M tuberculosis targets identified, screened and sequenced
by iviGene and provided to Oragenics.
30
Exhibit B
iviGene Corporation
List of Equipment Owned
February 2004
PURCHASE
DATE DESCRIPTION COST ACCUM DEPR BOOK VALUE
05/01/01 Pip 530.73 471.76 58.97
03/14/01 Variab 540.00 510.00 30.00
10/24/01 582.37 436.78 145.59
02/12/01 Lab Equi 673.10 654.40 18.70
02/09/01 Economy 773.34 751.86 21.48
03/12/01 Economy 799.24 754.84 44.40
07/16/01 Bior 930.00 775.00 155.00
11/06/01 Xxxxxx 1,023.96 739.53 284.43
03/12/01 R-1 1,626.76 1,536.38 90.38
12/10/01 Icycler 1,766.70 1,226.88 539.83
08/13/01 Icycler 2,300.00 1,852.78 447.22
02/15/01 Refrid 2,987.26 2,904.28 82.98
05/14/01 Icycler 3,650.00 3,244.44 405.56
02/14/01 MDL 4,495.50 4,370.63 124.88
12/20/01 98 5,340.14 3,708.43 1,631.71
02/14/01 Microplate 7,174.97 6,975.67 199.30
10/25/01 ATR 7,560.00 5,670.00 1,890.00
03/13/01 Icycler 7,666.75 7,240.82 425.93
03/22/01 Icycler 7,836.64 7,401.27 435.37
02/13/01 Hydro 9,059.24 8,807.59 251.65
02/13/01 French 10,900.00 10,597.22 302.78
02/11/02 Titanium taq DNA poly 1,050.00 670.83 379.17
03/11/02 Agarose MB Prep 551.20 336.84 214.36
04/18/03 Nuaire Freezer/CO2 backup 371.73 82.61 289.12
03/23/00 HP Laser Jet 629.78 629.78 0.00
03/23/00 Cordless Phone 349.77 349.77 0.00
04/07/00 2 UPS Backups 115.00 115.00 0.00
02/02/01 Intel P111 1,721.44 1,673.62 47.82
02/02/01 Intel P111 1,700.24 1,653.01 47.23
03/12/01 Computer eq 145.00 136.94 8.06
06/07/01 Laptop/ Modem 3,022.06 2,602.33 419.73
-----------------------------------------
87,872.92 78,881.30 8,991.63
31
