Exhibit 10.6
NONEXCLUSIVE LICENSE
Between
NANODYNAMICS, INC.
And
UNITED STATES DEPARTMENT OF THE NAVY
At
NAVAL RESEARCH LABORATORY
Table of Contents
Page
----
Article 1. DEFINITIONS .................................................. 2
1.1 "AFFILIATE" ..................................................... 2
1.2 "COMMERCIAL DEVELOPMENT PLAN" ................................... 2
1.3 "EFFECTIVE DATE" ................................................ 2
1.4 "FIELD OF USE" .................................................. 2
1.5 "LICENSED INVENTION" ............................................ 3
1.6 "LICENSED PATENTS" .............................................. 3
1.7 "LICENSED TERRITORY" ............................................ 3
1.8 "NET SELLING PRICE" ............................................. 3
1.9 "NET SALES" ..................................................... 3
1.10 "PRACTICAL APPLICATION" ......................................... 4
1.11 "REPORTING PERIOD" .............................................. 4
1.12 "ROYALTY-BEARING PRODUCT" ....................................... 4
1.13 "TO PRACTICE THE LICENSED INVENTION" ............................ 4
1.14 "UNITED STATES" ................................................. 4
1.15 "KEY MILESTONES" ................................................ 4
Article 2. LICENSE GRANT ................................................ 4
Article 3. LICENSEE'S PERFORMANCE ....................................... 5
Article 4. ROYALTIES AND OTHER CONSIDERATION ............................ 5
4.1 License Issue Fee ............................................... 5
4.2 Running Royalties ............................................... 5
4.3 Annual License Fee .............................................. 6
4.4 Milestone Payments .............................................. 6
4.5 Method of Payment ............................................... 7
4.6 Late Payments ................................................... 7
4.7 Retention of Records ............................................ 7
4.8 Audits .......................................................... 8
Article 5. PATENT MARKING AND NONENDORSEMENT ............................ 8
Article 6. REPRESENTATIONS, WARRANTIES, AND ACKNOWLEDGMENTS ............. 8
Article 7. REPORTS ...................................................... 9
7.1 Progress Reports ................................................ 9
7.2 Sales Reports ................................................... 9
Article 8. MODIFICATION AND TERMINATION ................................. 10
8.1 Termination or Modification by Mutual Agreement ................. 10
8.2 Termination by LICENSOR ......................................... 10
8.3 Procedures for Termination by LICENSOR .......................... 11
8.4 Termination by LICENSEE ......................................... 11
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Table of Contents
Article 9. NOTICES ...................................................... 11
Article 10. RESERVATION OF RIGHTS ....................................... 12
Article 11. PATENT PROSECUTION AND LITIGATION, .......................... 12
Article 12. GENERAL PROVISIONS .......................................... 13
12.1 Governing Law ............................................. 13
12.2 Complete Agreement ........................................ 13
12.3 Severability .............................................. 13
12.4 Interpretation of Headings ................................ 13
12.5 Independent Parties/Entities .............................. 13
Article 13. SIGNATURES .................................................. 13
13.1 For NanoDynamics, Inc ..................................... 13
13.2 For the Department of the Navy ............................ 14
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PREAMBLE
This non-exclusive patent license agreement (hereinafter called "LICENSE")
is made and entered into by and between the United States Department of the Navy
as represented by the Naval Research Laboratory (hereinafter called "LICENSOR"),
and NanoDynamies, Inc. a corporation incorporated in Delaware (hereinafter
called "LICENSEE") whose headquarters are located at 000 Xxxxxxxx Xxxxxxxxx,
Xxxxxxx, Xxx Xxxx 00000.
WITNESSETH:
(1) WHEREAS Title 35 of the United States Code, section 207, authorizes
Federal agencies to license their patents; and
(2) WHEREAS Title 37 of the Code of Federal Regulations, Chapter IV, Part
404 entitled "Licensing of Government Owned Inventions" sets forth the terms and
conditions under which licenses may be granted; and
(3) WHEREAS the above cited authorities provide that licensing of Federal
Government inventions will best serve the interests of the Government and the
public when utilization of such inventions is promoted and such inventions are
brought to PRACTICAL APPLICATION; and
(4) WHEREAS LICENSOR has an assignment of title to the inventions disclosed
and claimed in U.S. Patent No, 5,492,696 issued on February 20, 1996, for
"Controlled Release Microstructures", U.S. Patent No. 5,651,976 issued on July
29, 1997, for "Controlled Release of Active Agents Using Inorganic Tubules",
U.S. Patent No. 5,705,191 issued January 6, 1998, for "Sustained Delivery of
Active Compounds from Tubules, with Rational Control" and U.S. Patent 6,280,759
issued on August 28, 2001, for "Method of Controlled Release and Controlled
Release Microstructures" that has been made available to LICENSEE; and
(5) WHEREAS LICENSOR has published in the Federal Register of March 10,
2004, the availability of a license under U.S. Patent No. 5,492,696, in the
Federal Register of April 9, 2004, the availability of a license under U.S.
Patent Nos. 5,651,976 and 5,705,191; and in the Federal Register of February 3,
2005 the availability of a license under U.S. Patent No. 6,280,759; and
(6) WHEREAS LICENSEE has supplied LICENSOR with a plan for development and
marketing of the inventions that is hereby incorporated into this LICENSE as
Appendix A, and has expressed its intention to carry out this plan upon the
granting of this LICENSE; and
(7) WHEREAS LICENSEE has agreed that any products embodying the inventions
or produced through the use of the inventions for use or sale in the UNITED
STATES will be manufactured substantially in the UNITED STATES; and
(8) WHEREAS LICENSOR has determined that the interest of the Federal
Government and the public will best be served by the proposed license, in view
of
Nonexclusive Patent License Agreement No. 04-28466
Between NanoDynamics, Inc. and the U.S. Department of Navy
LICENSEE's intentions, plans, and ability to bring the inventions described and
claimed in U.S. Patent Nos. 5,492,696, 5,651,976, 5,705,191 and 6,280,759 to
PRACTICAL APPLICATION or otherwise promote the inventions' utilization by the
public;
(9) WHEREAS LICENSOR has considered the capabilities of LICENSEE to bring
the inventions to PRACTICAL APPLICATION and has found that LICENSEE is a
responsible party for negotiating this LICENSE on terms and conditions most
favorable to the public interest and that to grant this nonexclusive LICENSE
would be in the public interest;
NOW, THEREFORE, in accordance with and to the extent provided by the
aforementioned authorities and in consideration of the foregoing premises and of
the covenants and obligations hereinafter set forth to be well and truly
performed, and other good and valuable consideration, the parties hereto agree
to the foregoing and as follows:
Article 1. DEFINITIONS
The following definitions shall apply to the defined words where such
words are used in this LICENSE.
1.1 "AFFILIATE" shall mean any company, corporation, association or
business in which LICENSEE owns directly or indirectly a controlling interest.
1.2 "COMMERCIAL DEVELOPMENT PLAN" shall mean the plan for development and
marketing submitted by LICENSEE in LICENSEE's Application for License, with all
its attachments and amendments, incorporated into this LICENSE as Appendix A.
1.3 "EFFECTIVE DATE" shall mean the date of the last signature of the
signatories executing this LICENSE.
1.4 "FIELD OF USE" means the use of Halloysite microtubules for the elution
of biocidal, antifungal, or other antimicrobial agents for the prevention of
growth of bacteria and/or mold in Building Materials in the residential,
commercial, institutional, and healthcare construction products market.
Specifically, the Building Materials subfields of use are limited to those
listed below:
1.4.1 grouts, cements, paging materials, stuccos, and mortars
1.4.2 wallboards, and cellulose-based materials such as wallboard
papers, wallpapers, particleboard, paneling, MDF paneling,
plywood, chipboard, and ceiling tile
1.4.3 caulks, sealants and adhesives high pressure laminates,
including wall, counter top and floor coverings or components
thereof
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1.4.4 ceramics, cultured marbles, and tiles
1.4.5 non-cellulose (i.e. polymer) based wallpapers, paneling and
other wall, counter top and floor coverings or components
1.4.6 insulations
Note: The Building Materials field of use does not include paint, stain, varnish
and other finish coatings associated with structures.
1.5 "LICENSED INVENTION" means an invention claimed in the LICENSED
1.6 "LICENSED PATENTS" means U.S. Patent No, 5,492,696 entitled "Controlled
Release Microstructures" issued on February 20, 1996 to Xxxxxx X. Xxxxx, Xxxx X.
Xxxxxx, Xxxx X. Xxxxxx, Xxxx Xxxxxxx, Xxxxxx X. Xxxxxxx, Xx., Xxxx Xxxxxxx and
Xxxxxx X. Xxxxx; U.S. Patent No. 5,651,976 entitled "Controlled Release of
Active Agents Using Inorganic Tubules" issued on July 29, 1997 to Xxxxxx X.
Xxxxx and Xxxxx X. Xxxxx; and U.S. Patent No. 5,705,191 entitled "Sustained
Delivery of Active Compounds from Tubules, with Rational Control" issued
January 6, 1998, to Xxxxxx X. Xxxxx, Xxxx X. Xxxxxx, Xxxx X. Xxxxxxx, Xxxxxxxx
Xxxxxxxx, Xxxx Xxxxx and Xxxxx X. Xxxxx; and U.S. Patent No. 6,280,759 entitled
"Method of Controlled Release and Controlled Release Microstructures" issued on
August 28, 2001 to Xxxxxx X. Xxxxx, Xxxx X. Xxxxxx, Xxxx X. Xxxxxx, Xxxx
Xxxxxxx, Xxxxxx X. Xxxxxxx, Xx., Xxxx Xxxxxxx and Xxxxxx X. Xxxxx, and any
patents issuing thereon and any re-issue, continuation, or division thereof (to
the extent that the inventions in those applications are claimed in the parent
application on the EFFECTIVE DATE of this LICENSE) and any foreign counterparts
filed or issued in the LICENSED TERRITORY.
1.7 "LICENSED TERRITORY" Shall mean those geographic locations listed in
the attached Appendix B.
1.8 "NET SELLING PRICE" shall mean the invoice price of the ROYALTY-BEARING
PRODUCT sold by LICENSEE and not returned. A ROYALTY-BEARING PRODUCT will be
considered to be sold when shipped or delivered to a customer. NET SELLING PRICE
does not include (i) customary trade, quantity, or cash discounts to the extent
actually allowed and taken; (ii) to the extent separately stated on invoices,
taxes levied on the production, sale, transportation, delivery or use of a
ROYALTY-BEARING PRODUCT paid by LICENSEE; and (iii) to the extent separately
stated on invoices, outbound transportation costs.
1.9 "NET SALES" shall mean the gross amount billed by LICENSEE and its
AFFILIATES for a ROYALTY-BEARING PRODUCT sold by LICENSEE and its AFFILIATES,
respectively. NET SALES do not include (i) customary trade, quantity, or cash
discounts to the extent actually allowed and taken; (ii) to the extent
separately stated on invoices, taxes levied on the production, sale,
transportation, delivery or use of a
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ROYALTY-BEARING PRODUCT paid by LICENSEE; and (iii) to the extent separately
stated on invoices, outbound transportation costs.
1.10 "PRACTICAL APPLICATION" means to manufacture in the case of a
composition or product, to practice in the case of a process or method, or to
operate in the ease of a machine or system, and, in each case under such
conditions as to establish that the LICENSED INVENTIONS are being utilized and
that their benefits are to the extent permitted by law and Government
regulations available to the public on reasonable terms;
1.11 "REPORTING PERIOD" shall begin on the first day of each calendar year
and end on the last day of such calendar year.
1.12 "ROYALTY-BEARING PRODUCT" means any product within the scope of any
claim of the LICENSED PATENTS or made by a method claimed IN the LICENSED
PATENTS.
1.13 "TO PRACTICE THE LICENSED INVENTION" means to make, use, sell, offer
to sell, import, lease, or otherwise dispose of according to law any machine,
article of manufacture, composition of matter, or process physically embodying
or made according to a LICENSED INVENTION by or on behalf of LICENSEE.
1.14 "UNITED STATES" means the United States of America, its territories
and possessions, the District of Columbia, and the Commonwealth of Puerto Rico.
1.15 "KEY MILESTONES" means the milestones listed in Appendix C.
Article 2. LICENSE GRANT
2.1 LICENSOR grants to LICENSEE a nonexclusive right and license TO
PRACTICE THE LICENSED INVENTIONS throughout the LICENSED TERRITORY in the
Building Materials FIELDS OF USE for the life of the LICENSED PATENTS commencing
on the EFFECTIVE DATE of execution of this LICENSE and continuing until each
LICENSED PATENT expires unless the LICENSE is sooner modified or terminated in
whole or in part. NOTE: Should a partially exclusive license for the FIELD OF
USE become available, LICENSOR shall notify LICENSEE.
2.2 Except as provided herein, this LICENSE is not transferable or
assignable and does not grant LICENSEE the right to sublicense the LICENSED
INVENTIONS.
2.3 LICENSOR hereby grants to LICENSEE the right to extend the LICENSE
granted hereunder to one or more AFFILIATES subject to the terms and conditions
hereof, provided that the AFFILIATE is not directly or indirectly controlled by
a foreign company, corporation, association, business or government.
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2.4 The LICENSE is nonassignable without written approval of LICENSOR
except to the successor of that part of LICENSEE's business to which the
LICENSED INVENTIONS pertain, provided that the successor is not directly or
indirectly controlled by a foreign company, corporation, association, business
or government.
Article 3. LICENSEE'S PERFORMANCE
3.1 LICENSEE agrees to carry out the COMMERCIAL DEVELOPMENT PLAN to bring
the LICENSED INVENTIONS to PRACTICAL APPLICATION by December 31, 2006. LICENSEE
will, thereafter, continue to make the benefits of the LICENSED INVENTIONS
reasonably accessible to the public for the remainder of the period of the
LICENSE.
3.2 LICENSEE agrees that during the period of this LICENSE any products
embodying a LICENSED INVENTION or produced through the use of a LICENSED
INVENTION for use or sale by LICENSEE in the UNITED STATES will be manufactured
substantially in the UNITED STATES.
3.3 LICENSEE agrees to report promptly to LICENSOR any changes in mailing
address, name or company affiliation during the period of this LICENSE.
3.4 LICENSEE agrees to report within thirty (30) days discontinuance of
LICENSEE'S making the benefits of the LICENSED INVENTIONS reasonably accessible
to the United States public.
Article 4. ROYALTIES AND OTHER CONSIDERATION
4.1 License Issue Fee
LICENSEE shall pay to LICENSOR a non-refundable license issue fee in
the amount of five thousand dollars ($5000) payable upon the EFFECTIVE DATE of
this LICENSE. The above License Issue Fee is a "token" license issue fee as this
license is intended to be a temporary license for a period of up to one year
during which LICENSOR shall resolve internal administrative issues related to
the issuance of a partially exclusive license to LICENSEE and during which
LICENSEE and LICENSOR shall negotiate a partially exclusive license for the
FIELDS OF USE. In the event that a partially exclusive license for the FIELD OF
USE is not executed within two (2) years of the EFFECTIVE DATE, because LICENSEE
has declined LICENSOR's offer of a partially exclusive license, LICENSEE shall
pay to LICENSOR a License Issue fee of fifty thousand dollars ($50,000) which
shall be due and payable on the second anniversary of the EFFECTIVE DATE.
4.2 Running Royalties
LICENSEE shall pay royalties to LICENSOR of two and one half percent (2.5%)
of the NET SELLING PRICE for each ROYALTY-BEARING PRODUCT made, used
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or sold by LICENSEE, and its licensed AFFILIATES in the LICENSED TERRITORY.
Royalties will not be paid to LICENSOR, nor shall they be charged or collected,
on items sold directly to instrumentalities of the U.S. Government or for known
and verifiable U.S. Government end use. Such sales of ROYALTY-BEARING PRODUCT
with established list or catalog prices shall have their prices reduced by an
amount equal to that part of the established price attributable to the royalty.
On sales made between LICENSEE and its AFFILIATES for resale, the royalty shall
be paid on the highest NET SELLING PRICE among such sales.
4.3 Annual License Fee
Notwithstanding the foregoing provision for the payment of running
royalties on the NET SELLING PRICE, LICENSEE agrees to pay an annual license fee
of six thousand dollars ($6,000) for calendar year 2007, fifteen thousand
dollars ($15,000) for calendar year 2008 thirty thousand dollars ($30,000) for
calendar year 2010 and each calendar year thereafter throughout the period of
the LICENSE. If, however, LICENSOR shall grant a license of the LICENSED
INVENTIONS for the FIELD OF USE to a third party during the term of this
Agreement, from the date of such third party license, LICENSEE shall pay annual
license fees equal to fifty percent (50%) of the amount set forth in the
immediately preceding sentence. The annual license fee for each calendar year
shall be paid on the anniversary of the EFFECTIVE DATE and will be credited
toward any payment of running royalties to accrue during the calendar year
following payment. Such annual license fee payments are not refundable in whole
or in part, and unapplied credits will not carry forward into subsequent
calendar years.
4.4 Milestone Payments
LICENSEE shall make payments to LICENSOR upon the achievement of
milestones in accordance with the following schedule:
4.4.1 Upon completion of KEY MILESTONE 3, LICENSEE shall make a
Milestone Payment of five thousand dollars ($5,000) which shall
be due and payable within thirty (30) days of the completion of
this KEY MILESTONE.
4.4.2 Upon completion of KEY MILESTONE 4, LICENSEE shall make a
Milestone Payment of five thousand dollars ($5,000) which shall
be due and payable within thirty (30) days of the completion of
this KEY MILESTONE,
4.4.3 Upon completion of KEY MILESTONE 5, LICENSEE shall make a
Milestone Payment of five thousand dollars ($5,000) which shall
be due and payable within ninety (90) days of the completion of
this KEY MILESTONE.
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4.4.4 Upon completion of KEY MILESTONE 6, LICENSEE shall make a
Milestone Payment of five thousand dollars ($5,000) which shall
be due and payable within one hundred eighty (180) days of the
completion of this KEY MILESTONE.
4.5 Method of Payment
LICENSEE shall send to LICENSOR all running royalties that accrue for
each REPORTING PERIOD and shall be due to LICENSOR within sixty (60) days of the
end of each REPORTING PERIOD. The final royalty payment shall be due within
sixty (60) days of expiration or termination of the LICENSE. All royalty
payments shall be accompanied by a sales report, in accordance with Article 7.
All payments due LICENSOR under this LICENSE shall be made payable in
United States dollars to:
Department of the Navy
and mailed to:
Office of Naval Research
Office of Corporate Counsel (ONR BDCC)
One Liberty Center
000 Xxxxx Xxxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000-0000
Conversion of foreign currency to US dollars shall be made at the
conversion rate existing in the United States, as reported in the Wall Street
Journal, on the last working date of the applicable calendar year. Such payments
shall be without deduction of exchange, collection, or other charges, and
specifically, without deduction of withholding or similar taxes or other
government-imposed fees or taxes, except as permitted in the definition of NET
SELLING PRICE.
4.6 Late Payments
Payments made by LICENSEE after the due date shall include a surcharge
of two percent (2%) and interest at the rate of one and one-half percent (1 1/2
%) per month or part month late. Further, if the License Issue Fee, the Running
Royalty, the Annual License Fee or other fee or reimbursement is not paid within
two months of the due date, together with any surcharge and interest due, this
LICENSE may be terminated by LICENSOR, in accordance with Article 8.
4.7 Retention of Records
LICENSEE agrees to make and keep, and shall require its AFFILIATES to
make and keep, full, accurate and complete books and records (together with
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supporting documentation) as are necessary to establish its compliance with
Article 4. Such records shall be retained for at least three (3) years following
the end of the REPORTING PERIOD to which they relate.
4.8 Audits
LICENSEE agrees that LICENSOR may, if LICENSOR so desires at a future
time or times, have a duly authorized agent or representative in LICENSOR's
behalf examine all books and records and supporting documentation described in
the preceding section, either at LICENSEE's business premises or at a place
mutually agreed upon by LICENSEE and LICENSOR for the sole purpose of verifying
reports and payments hereunder. In conducting examinations pursuant to this
paragraph, LICENSOR's representative shall have access to all records that
LICENSOR reasonably believes to be relevant to the calculation of royalties
under Article 4. If a royalty payment deficiency is determined, LICENSEE shall
pay the royalty deficiency outstanding within thirty (30) days of receiving
written notice thereof. Payments made by LICENSEE after the due date shall
include interest at the rate of one and one-half percent (1 1/2 %) per month or
part month late, plus a two percent (2%) surcharge. Such examination by
LICENSOR's representative shall be at LICENSOR's expense, except that, if such
examination shows an underreporting or underpayment in excess of five percent
(5%) for any twelve (12) month period, then LICENSEE shall pay the cost of such
examination.
Article 5. PATENT MARKING AND NONENDORSEMENT
LICENSEE hereby agrees to xxxx each ROYALTY-BEARING PRODUCT under
this LICENSE (or when the character of the product precludes marking, the
package containing any such ROYALTY-BEARING PRODUCT) with the notation "Licensed
under U.S. Patent No. (LICENSEE to insert relevant patent numbers) issued to the
United States of America, as represented by the Secretary of the Navy." LICENSEE
agrees not to create the appearance that LICENSOR endorses LICENSEE'S business
or products.
Article 6. REPRESENTATIONS, WARRANTIES, AND ACKNOWLEDGMENTS
6.1 LICENSOR makes no warranties or representations of any kind or nature
regarding the patentability of any LICENSER INVENTION or the validity, scope, or
enforceability of the LICENSED PATENTS, or any claims therein.
6.2 LICENSOR makes no warranties or representations of any kind or nature
with respect to the practice, including but not limited to freedom to operate,
of any LICENSER INVENTION or regarding any ROYALTY-BEARING PRODUCT, nor assumes
any liability therefore.
6.3 Neither the grant of this LICENSE nor anything contained in or related
to the grant of this LICENSE is intended nor shall be construed to confer upon
LICENSEE or any other person immunity from or defenses under the antitrust laws,
a
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charge of patent misuse, or any other provision of law (of any jurisdiction) by
reason of the source of the grant or otherwise.
6.4 Neither this LICENSE nor anything contained herein is intended nor
shall be construed to grant to LICENSEE any kind or nature of rights in any
inventions or patents other than the LICENSED INVENTIONS and the LICENSED
PATENTS.
6.5 LICENSEE acknowledges that it is subject to and shall comply with all
applicable United States laws, regulations, and Executive orders, pertaining to
exporting from the United States. LICENSEE shall not export, or assist others in
the export, of any ROYALTY-BEARING PRODUCT or information related to the
practice of the LICENSED INVENTIONS without first having, solely at its own
expense, identified and obtained all required export licenses and
authorizations.
Article 7. REPORTS
7.1 Progress Reports
LICENSEE shall submit semiannual progress reports on its efforts to
achieve PRACTICAL APPLICATION of the LICENSED INVENTIONS. The first report is
due six months after the EFFECTIVE DATE, the second report is due one year after
the EFFECTIVE DATE and subsequent reports shall be made every year thereafter
until such time as the LICENSED INVENTIONS for each subfield of use has been
brought to the point of PRACTICAL APPLICATION. Progress reports shall describe
in detail LICENSEE's efforts toward carrying out its COMMERCIAL DEVELOPMENT
PLAN. Progress reports shall also include a discussion of the actual number of
staff and expenditures directed toward the commercialization effort since the
preceding report. Progress reports shall also contain information within
LICENSEE's knowledge pertaining to any commercial use being made of the LICENSED
INVENTIONS; and, any other information that LICENSOR and LICENSEE agree is
pertinent to the commercialization effort.
7.2 Sales Reports
7.2.1 After the first commercial sale of a LICENSED INVENTION,
LICENSEE shall deliver reports to LICENSOR within sixty (60) days
of the end of each REPORTING PERIOD, containing information
concerning the immediately preceding REPORTING PERIOD, as further
described this section.
7.2.2 LICENSEE shall submit an annual report detailing the sales
activity of ROYALTY-BEARING PRODUCTS during the preceding
calendar year to include: dates of sales; quantities sold; NET
SELLING PRICE; and, the total amount of royalties paid for the
year. The annual sales report shall be submitted, regardless of
the volume of sales, within sixty (60) days of the end of each
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REPORTING PERIOD with any royalty payments due in accordance with
Article 4. A final sales report is due sixty (60) days after the
expiration or termination of this LICENSE.
7.2.3 Method of Reporting
All reports shall be submitted to:
Office of Naval Research
Office of Corporate Counsel (ONR RDCC)
One Liberty Center
000 Xxxxx Xxxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000-0000
with a copy of each report to:
Naval Research Laboratory
Technology Transfer Xxxxxx
0000 Xxxxxxxx Xxxxxx, XX
Xxxxxxxxxx, XX 00000
Article 8. MODIFICATION AND TERMINATION
8.1 Termination or Modification by Mutual Agreement
Any modification or termination of this LICENSE by mutual agreement
shall be in writing and signed by both parties.
8.2 Termination by LICENSOR
LICENSOR may terminate this LICENSE, in whole or in part, if:
(a) LICENSEE is not executing the KEY MILESTONES as listed in Appendix
C;
(b) LICENSOR determines that such action is necessary to meet
requirements for public use as specified in Federal regulations issued after the
date of this LICENSE and such requirements are not reasonably being satisfied by
LICENSEE;
(c) LICENSEE willfully made a false statement of or willfully omitted
a material fact in its application for license or in any report required by this
LICENSE;
(d) LICENSEE has been found by a court of competent jurisdiction to
have violated Federal antitrust laws or any other provision of law in connection
with its performance under this LICENSE;
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(e) LICENSEE commits a material breach of a covenant contained in this
LICENSE, including but not limited to the covenants in Article 3; other than a
breach resulting in automatic termination; or,
(f) LICENSEE defaults in the payment of any amount due to LICENSOR and
fails to cure such default within thirty (30) calendar days after the date of
written notice thereof from LICENSOR.
8.3 Procedures for Termination by LICENSOR
8.3.1 Before terminating this LICENSE, in whole or in part, for any
reason other than by mutual agreement or under the automatic
termination provisions, LICENSOR shall furnish LICENSEE a
written notice of intention to terminate stating the reason(s)
therefor. LICENSEE shall be allowed thirty calendar (30) days
after the date of the notice (or such other period as may be
agreed to by the parties) to remedy any deficiency stated in the
notice as the reason for termination or to show cause why this
LICENSE should not be terminated.
8.3.2 After the expiration of thirty (30) calendar days following the
date of the notice, LICENSOR shall consider any matter submitted
by LICENSEE and provide a written determination about termination
of the LICENSE to LICENSEE.
8.3.3 LICENSEE has a right to appeal, in accordance with procedures
prescribed by the Chief of Naval Research, any decision or
determination of LICENSOR concerning the interpretation,
modification, and/or termination (in whole or in part) of this
LICENSE.
8.4 Termination by LICENSEE
LICENSEE may terminate this LICENSE by providing a written notice of
its intent to terminate the LICENSE to LICENSOR no less than sixty days prior to
the intended date of termination. Licensee's written notice must include
LICENSEE's statement that LICENSEE shall not PRACTICE THE LICENSED INVENTIONS
after the LICENSE terminates. LICENSEE's written notice shall specify the
EFFECTIVE DATE of termination,
Article 9. NOTICES
9.1 All notices required under this LICENSE shall be considered timely made
if properly addressed and sent via commercial overnight delivery service by the
due date.
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9.2 All communications and notices required to be made to LICENSOR shall be
addressed as follows:
Naval Research Laboratory
Technology Transfer Xxxxxx
0000 Xxxxxxxx Xxxxxx, XX
Xxxxxxxxxx, XX 00000
9.3 All communications and notices required to be made to LICENSEE shall be
addressed as follows:
Xx. Xxxx Xxx
NanoDynamics, Inc.
000 Xxxxxxxx Xxxxxxxxx
Xxxxxxx, XX 00000
Article 10. RESERVATION OF RIGHTS
This LICENSE is subject to the irrevocable, royalty-free right of the
Government of the United States TO PRACTICE AND HAVE PRACTICED THE LICENSED
INVENTIONS throughout the world by or on behalf of the United States and by or
on behalf of any foreign government or intergovernmental or international
organization pursuant to any existing or future treaty or agreement with the
Government of the United States.
Article 11. PATENT PROSECUTION AND LITIGATION
11.1 LICENSOR shall diligently prosecute and maintain the LICENSED PATENTS,
and, if requested by LICENSEE and permitted by law and regulation, provide
LICENSEE with copies of all relevant documentation. LICENSEE agrees not to
disclose to others such documentation without prior written approval from
LICENSOR.
11.2 Notwithstanding Article 9, any notice by LICENSEE pertaining to patent
prosecution under this Article shall be addressed to:
Office of Naval Research
Office of Corporate Counsel (ONR BDCC)
One Liberty Center
000 Xxxxx Xxxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000-0000
with copy to:
Naval Research Laboratory
Technology Transfer Office
12
Nonexclusive Patent License Agreement No. 04-28466
Between NanoDynamics, Inc. and the U.S. Department of Navy
0000 Xxxxxxxx Xxxxxx, XX
Xxxxxxxxxx, XX 00000
11.3 LICENSOR does not by entering into this LICENSE transfer the property
rights in the LICENSED INVENTIONS.
Article 12. GENERAL PROVISIONS.
12.1 Governing Law
This LICENSE shall be governed by and construed in accordance with
applicable United States Federal Law, Regulations, Directives, and Instructions.
12.2 Complete Agreement
This LICENSE constitutes the complete understanding and agreement
between LICENSOR and LICENSEE and supersedes any prior understanding or written
or oral agreement relative to the subject matter of this LICENSE.
12.3 Severability
The illegality or invalidity of any Article of this LICENSE shall not
impair, affect, or invalidate any other Article of this LICENSE.
12.4 Interpretation of Headings
Headings of the Articles of this LICENSE are for convenience of
reference only and do not form a part of this LICENSE and shall in no way
affect the interpretation thereof.
12.5 Independent Parties/Entities
The relationship of LICENSOR and LICENSEE is that of independent
parties and not as agents of each other, partners, or participants in a joint
venture. LICENSOR and LICENSEE shall each maintain sole and exclusive control
over their respective personnel and operations.
Article 13. SIGNATURES
IN WITNESS WHEREOF, the parties hereto have caused this LICENSE to be
executed by their authorized representatives.
13.1 For NanoDynamics, Inc.
I the undersigned, am authorized to bind NanoDynamics, Inc. to this
LICENSE and do so by affixing my signature hereto.
13
Nonexclusive Patent License Agreement No. 04-28466
Between NanoDynamics, Inc. and the U.S. Department of Navy
Entered into this 16th day of September 2005,
By: /s/ Xxxxx X. Xxxxxxx
---------------------------------
(signature)
Typed Name: Xxxxx X. Xxxxxxx
Title: CEO
13.2 For the Department of the Navy
I, the undersigned, in accordance with 35 USC 209, am authorized to
bind the United States Department of the Navy to this LICENSE and do so by
affixing my signature hereto.
Entered into this 23rd day of
September 2005,
By: /s/ X.X. Xxxxxxxx
---------------------------------
(signature)
Typed Name: X.X. Xxxxxxxx
Title: Commanding Officer, Captain,
U.S. Navy
14
