Exhibit 10.2
LICENSE AGREEMENT
This License Agreement ("Agreement") is made and entered into this 24th of
November, 2004 (the "Effective Date"), by and between ACCELR8 TECHNOLOGY
CORPORATION, a Colorado corporation, having its principal office at 0000 Xxxxx
Xxxxxxxx, Xxxx 0-000, Xxxxxx, XX S0221 (hereinafter "Accelr8") and XXXXXX Jenaer
Glas GmbH, having its principal office at Xxxx-Xxxxxx-Xxxxxxx 00,00000 Xxxx,
Xxxxxxx (hereinafter "Schott"). Accelr8 and Schott may be referred to herein
individually as a "Party" and collectively as the "Parties."
WITNESSETH
WHEREAS, Accelr8 has developed proprietary surface chemistry and coating
technology; and
WHEREAS, Schott desires to obtain a license to utilize such technology in a
standard product that it will market and distribute to certain markets, and
Accelr8 so agrees, subject to the terms and conditions of this Agreement; and
WHEREAS, the Parties simultaneously execute a Supply Agreement
NOW, THEREFORE, in consideration of the foregoing recitals and the mutual
covenants and agreements contained herein, the Parties, intending to be legally
bound, do hereby agree as follows:
ARTICLE l DEFINITIONS
As used herein, the following terms shall have the following meanings:
1.01 "Acce1r8 Intellectual Property" means the Accelr8 Know-How and Accelr8
Patents.
1.02 "Accelr8 Know-How" means all tangible and intangible (a) techniques,
technology, practices, trade secrets, inventions (whether patentable or
not), methods, processes (including manufacturing and quality control
processes), knowledge, know-how, skill, experience, test data and results
(including pharmacological, toxicological and clinical test data and
results), analytical and quality control data, results or descriptions,
software and algorithms, and (b) compounds, compositions of matter,
complexes and physical, biological or chemical material, which exist as of
the Effective Date and are related to Accelr8's proprietary surface
chemistry and coating technology.
1.03 "Accelr8 Patents" means (a) those Patents and Patent Applications listed in
Appendix A and (b) any Patents owned or licensed (with a right of
sublicense) by Accelr8 that cover the Process Improvements.
1.04 "Affiliate" means every corporation, or entity, which, directly or
indirectly, or through one or more intermediaries, controls, is controlled
by, or is under common control with a Party, as well as every officer,
director, agent and representative of any such corporation or entity. For
the purposes of the foregoing definition, the word "control" (including,
with correlative meaning, the terms "controlled by" or "under common
control with") means the actual power, either directly or indirectly
through one or more intermediaries, to direct or cause the direction of the
management and policies of such entity, whether by the ownership of at
least fifty percent (50010) of the voting stock of such entity, or by
contract or otherwise.
1.05 "Calendar Quarter" means any period of three (3) consecutive months ending
on March 31, June 30, September 30 and December 31.
1.06 "Confidential Information" has the meaning set forth in ss. 8.01.
1.07 "Effective Date" means the date specified in the first paragraph of this
Agreement.
1.08 "Exclusive Field of Use" means micro arraying applications in which the
entity printed, spotted, or otherwise arrayed onto the Licensed Product is
a protein or a peptide.
1.09 "Hydrogen Coatings" means coatings comprising hydrophilic polymers used to
immobilize molecules and other materials for the purpose of micro arraying.
1.10 "Improvements" means inventions, discoveries, works of authorship, trade
secrets, know-how or developments, whether or not patentable, that are
made, conceived, reduced to practice or otherwise generated during the
Term, which are improvements, modifications or other developments to the
Licensed Product (including, without limitation, the manufacturing
processes for such products and/or the OptiChem coating technology), the
Accelr8 Technology or the OptiChem coating technology.
1.11 "Inventions" means all Improvements, inventions, discoveries, processes,
works of authorship, trade secrets and other know-how, developments or the
like, whether or not patentable, that are made, conceived, reduced to
practice or otherwise generated solely by a Party or jointly by the Parties
as a result of this Agreement (including, without limitation, Inventions
related to the Licensed Product or its manufacture).
1.12 "Licensed Product" means the product described in Appendix B.
1.13 "Net Sales" means the actual gross selling price of Licensed Products by
Schott or its Affiliates, and their respective agents, contractors or
distributors, whether invoiced or not, less (a) discounts allowed in
amounts customary in the trade to the extent actually granted, (b)
sales/tariff duties and/or taxes directly invoiced and paid, (c) outbound
transportation prepaid, and (c) amounts credited on returns. Net Sales
shall also include the fair market value of any non-cash consideration
received for the sale, lease or transfer of Licensed Products.
1.14 "Non-Exclusive Field of Use" means micro arraying applications not included
in the Exclusive Field of Use.
1.15 "Patents" means:
(a) United States and foreign patents and/or patent applications and/or
provisional patent applications:
(b) United States and foreign patents issued from the applications
described in (a) above and from divisional and continuations of these
applications;
(c) U.S. and foreign continuation-in-part applications, and the resulting
patents of any of the U.S. and foreign applications described in (a) or (b)
above or this paragraph (c); and
(d) any reissues of United States and foreign patents described in (a), (b)
or (c) above.
1.16 "Process Improvements" means any Improvements to the processes for the
manufactured of the Licensed Product
1.17 "Renewal Term" means the one (1) year renewal term described in ss.11.01.
1.18 "Stock Product" means a product that has a single, standard set of
specifications (including materials and dimensions), publicly available at
all times to all Schott customers.
1.19 "Term" means the term of this Agreement, as determined in accordance with
Article 11.
1.20 "Third Party" means any entity or person other than Accelr8 or Schott.
ARTICLE 2. GRANT OF RIGHTS
2.01 Accelr8 hereby grants, and Schott accepts, during the Term and subject to
the terms and conditions of this Agreement, a worldwide, non-transferable
(except as provided in ss.13.01), royalty-bearing license under the Accelr8
Intellectual Property to make, use, sell offer to sell import and export the
Licensed Product (a) on an exclusive basis in the Exclusive Field of Use, and
(b) on a non-exclusive basis in the Non-Exclusive Field of Use. Notwithstanding
the foregoing, the license to the Licensed Product in the Exclusive Field of Use
(as granted above in this ss.2.01) shall become non-exclusive as provided in
ss.5.02(b). The foregoing license also permits Schott to combine the Licensed
Product with Xxxxxx'x MPX technology, provided that Xxxxxx'x license to make,
use, sell, offer to sell, import and export the combined product is in
accordance with the license granted in the prior sentence.
Accelr8 shall provide Schott with all information necessary to produce and
market Licensed Products, including descriptions or specifications of machines,
components and materials used for the production. Accelr8 shall provide Schott
with a detailed and complete documentation of Accelr8's production processes
within sixty (60) days after the Effective Date. Accelr8 will also provide
training for Xxxxxx'x production staff under the terms of ss.3.05, which the
Parties intend to include one (1) senior scientist of Accelr8 being on-site at a
Schott facility for one (1) week.
2.02 The license and rights granted by Accelr8 in ss.2.01 are subject to the
following:
(a) Schott may not sublicense the license and rights granted to its
hereunder to any Third Party, including, without limitation, any Affiliate;
(b) the Licensed Product must be a Stock Product;
(c) the Licensed Product must be appropriately labeled for use and sale,
with restrictions in the instructions for use prohibiting use for medical
purposes.
(d) Schott acknowledges that the license granted to it hereunder does not
include any Improvements developed during the Term, except for the Process
Improvements.
2.03 Notwithstanding anything to the contrary in this Agreement, Acce1r8
reserves the right to make and use the Licensed Product in its own facility for
its own use (not for resale) in all fields of use (including, without
limitation, the Exclusive Field of Use), and to purchase the Licensed Product
for use and sale in all fields of use from Schott under terms and conditions
described in Article 4 with the exception that Accelr8 agrees not to sell the
Licensed Product to any Third Party who Accelr8 knows is a competitor to Schott
as listed, but not limited to, in Appendix C and not to sell the Licensed
Products to any Third Party already buying the Licensed Products from Schott or
already in contact with Schott related to the Licensed Product.
2.04 Accelr8 hereby reserves all rights in and to the Accelr8 Intellectual
Property not expressly granted to Schott hereunder, including, without
limitation, the right to make, have made, use, sell, offer to sell, import and
export the Licensed Product outside the Exclusive Field of Use, with the
exception that Accelr8 agrees not to sell the Licensed Product to any Third
Party who Accelr8 knows is a competitor to Schott as listed, but not limited to,
in Appendix C and intends to distribute the Licensed Product for use in the
Non-Exclusive Field of Use without modification, without incorporation into said
party's own products or packaged application kits, or without related services
or other value added form that is differentiated from Xxxxxx'x commercial
offering of the Licensed Product.
ARTICLE 3. DILIGENCE AND COMMERCIALIZATION
3.01 As between the Parties, Schott shall control and be responsible for, at its
sole expense and in its sole discretion, the manufacturing and commercialization
of the Licensed Products, subject to the requirements of ss.3.02.
3.02 (a) Schott shall use reasonable efforts to market, promote and sell
Licensed Products in the Exclusive Field of Use throughout the Term of this
Agreement
(b) Schott will offer for sale in its product listings, price listings,
catalogues and the like the Licensed Product throughout the Tenn.
A failure of Schott to satisfy any of its obligations under ss.3.02 shall
be deemed a material breach of this Agreement
3.03 Accelr8 shall be the sole supplier of technology for Hydrogel Coatings to
Schott, except where Patents or other intellectual property owned by a Third
Party, or manufacturing issues related to the Accelr8 Intellectual Property,
prevent commercialization of products by Schott.
3.04 The Parties may provide each other with all freedom to operate opinions and
other similar information related to the manufacture, use, sale or import of the
Licensed Product as contemplated hereunder. Said freedom to operate opinions and
other similar information shall be subject to the confidentiality terms
described in ss.8.01.
3.05 Each of the Parties will provide to the other Party, on a time and
materials basis as reasonably requested by the other Party, technical support
and consulting services related to the Licensed Product subject to mutual
agreement on applicable terms and conditions. Specifically, Schott agrees to
'pay Accelr8 for services related to preparing documentation and training
Xxxxxx'x production staff as stated in ss.2.01 and under the terms of ss.5.04.
3.06 The Parties will cooperate in the marketing and promotion of the Licensed
Products, provided that Accelr8 is not obligated to expend resources other than
those it is compensated for under ss.3.05 herein. Such cooperation may include,
without limitation, the sharing of market information, customer information and
customer leads. Without limiting the generality of the foregoing, Schott will
provide to Accelr8 within forty (40) days after the end of each Calendar Quarter
a written report about all sales of the Licensed Product during such calendar
Quarter, and a disclosure of the lowest price invoiced or offered to any
customer for the Licensed Products during such Quarter. In addition, Schott will
use reasonable efforts to notify Accelr8 of any misuse of the Licensed Product
(i.e., any use not in accordance with the applicable instructions for use for
the Licensed Product) by any Third Party, and will stop all sales of Licensed
Products as promptly as is practical to such Third Party.
ARTICLE 4. ADDITIONAL AGREEMENTS
4.01 Schott shall supply to Accelr8 units of the Licensed Product that it orders
from time to time during the Term at a price equal to the lesser of thirty five
percent (35%) off the then-current list price (which list price is initially
Eighteen Dollars and Fifty Cents ($18.50), or the lowest price offered by Schott
to any Third Party. Each Party agrees to notify the other in the event of a
change in list price.
ARTICLE 5. PAYMENTS AND PAYMENT TERMS
5.01 Initial Fee. On the Effective Date, Schott shall pay to Accelr8 a
non-refundable fee of One Hundred Thousand Dollars ($100,000). Fifty Thousand
Dollars ($50,000) of such fee shall be credited against future royalties payable
pursuant to ss.5.02 ("Prepaid Royalties").
5.02 Royal Payments. Subject to the other terms and conditions of this
Agreement:
(a) During the first two (2) years during the Term ("Initial Term"), Schott
shall pay Accelr8 a royalty payment equal to six percent (6%) of Net Sales
of Licensed Products; provided, however, that if the total Net Sales during
the Initial Term equal or exceed One Million One Hundred Twenty Five
Thousand Dollars ($1,125,000), then the total royalty payable by Schott
under this paragraph (a) for the Initial Term shall be a flat fee of Ninety
Thousand Dollars ($90,000).
(b) If the Term is extended for the Renewal Term as provided in the second
sentence of Section 11.01, and if Schott desires to retain the exclusive
license to the Licensed Product in the Exclusive Field of Use during the
Renewal Term, then Schott shall pay Accelr8 a renewal fee equal to (i)
Ninety Thousand Dollars ($90,000) on or before the start of the Renewal
Term, plus (ii) a royalty of six percent (6%) of Net Sales of Licensed
Products during the Renewal Term; provided, however, that if Net Sales of
Licensed Products during the Renewal Term equal of exceed One Million Eight
Hundred Seventy Five Thousand Dollars ($1,875,000), then the total royalty
payable by Schott under this item (ii) for the Renewal Term shall be a flat
fee of One Hundred Fifty Thousand Dollars ($150,000). Any failure of Schott
to pay the royalties required in item (i) above shall automatically convert
the exclusive license granted to Schott in ss.2.01(a) to a non-exclusive
license during the Renewal Term. The flat fee described in item (ii) above
for the Renewal Term is in addition to the initial fee of $90,000 payable
under item (i) above, and any fees or royalties paid for the Initial Term.
(c) If the Term is extended for the Renewal Term as provided in ss.11.01,
and if Schott does not make the required royalty payment in ss.5.02(b)(i)
(in order to retain the exclusive license to the Licensed Product in the
Exclusive Field of Use during the Renewal Term), then Schott will have a
non-exclusive license to the Licensed Product during the Renewal Term and
Schott shall pay Accelr8 a royalty payment equal to six percent (6%) of Net
Sales of Licensed Products during the Renewal Tenn.
(d) No royalties shall be payable by Schott to Accelr8 under this ss.5.02
until the Prepaid Royalties are exhausted.
5.03 No royalties or flat fees shall be payable by Schott to Accelr8 for the
Licensed Products purchased by Schott from Acce1r8 under the Supply Agreement
executed simultaneously or any other Supply agreement executed prior or
simultaneously or after the execution of this License Agreement.
All royalty amounts payable to Accelr8 under this Agreement shall be paid as
provided in ss.5.02 above, with all royalties on Net Sales of Licensed Products
payable (including the balance of any flat fee royalty payment) within forty
(40) days after the end of the Calendar Quarter in which the Net Sales giving
rise to the royalty payment obligation were made. Each payment of royalty
payments shall be accompanied by the report described in ss.6.01.
5.04 Schott will pay to Accelr8 the sum of Fifteen Thousand dollars ($15,000)
for services related to production Know-How transfer as identified in ss.3.05
and ss.2.01. This fee does not include reimbursement of reasonable direct
expenses, such as travel, which Schott agrees to provide.
5.05 Except as set forth below, all payments hereunder shall be payable in U.S.
dollars. When conversion of payments from any foreign currency is required, such
conversion shall be at an exchange rate equal to the rate of exchange for the
currency of the country from which the royalties are payable as published by The
Wall Street Journal, East Coast Edition, on the final day of the Calendar
Quarter for which a payment is due. In any country where conversion of the local
currency is blocked and such currency cannot be removed from the country, at the
election of Accelr8 royalties accrued in that country may be paid to Accelr8 in
that country in local currency by deposit in a local bank designated by Accelr8.
All payments other than those specified in the preceding sentence shall be
payable to Accelr8 by wire transfer, in immediately available funds, to a bank
account as may be designated by Accelr8 in writing from time to time.
5.06 If laws or regulations require that taxes be withheld from royalty payments
due to Accelr8 hereunder, Schott shall have the right to (a) deduct such taxes
from the royalty payment due to Accelr8 hereunder, (b) timely pay the taxes to
the proper taxing authority, and (c) send evidence of the obligation together
with proof of tax payment (including certification of receipt by the taxing
authority) to Accelr8 within fifty (50) days following such tax payment
Notwithstanding the foregoing, Schott shall cooperate with Accelr8 and shall
execute and deliver such documents and take such other actions as Accelr8 may
reasonably request, for the purpose of (x) obtaining an exemption from the tax
withholding requirements of any foreign country, (y) obtaining a refund of any
taxes actually withheld by Schott and paid to a foreign country pursuant to tax
withholding requirements, and (z) otherwise seeking to lawfully mitigate the
amount of taxes required to be withheld from any payments due to Accelr8
hereunder pursuant to applicable foreign tax law.
5.07 Any amounts not paid by Schott when due under this Agreement shall be
subject to interest from and including the date payment is due through and
including the date upon which Accelr8 has actually received payment at a rate
equal to the sum of two percent (2%) plus the prime rate of interest quoted in
the Money Rates section of The Wall Street Journal, East Coast Edition,
calculated daily on the basis of a 365-day year, or similar reputable data
source, or, if lower, the highest rate permitted under applicable law. The
payment of such interest shall not limit Accelr8 from exercising any other
rights or remedies it may have as a consequence of the lateness of any payment.
5.08 On sales of Licensed Products by Schott that are made in other than
arm's-length transactions, the value of the Net Sales attributed under this
Article 5 to such a transaction shall be that which would have been received in
an arm's-length transaction, based on a like transaction at that time.
ARTICLE 6. REPORTS, RECORDS AND AUDITS
Schott shall, without request by Accelr8, render to Acce1r8 written
accounts for each Calendar Quarter of the Net Sales of Licensed Products made
during such Calendar Quarter and shall pay to Accelr8 the royalties due on such
Net Sales, if any, in accordance with this Article 6. The written report shall
be in the form mutually agreed upon by the Parties, but will include the
information required in ss.3.06.
6.02 Schott shall keep accurate records in sufficient detail to reflect its
operations under this Agreement and to enable the royalties accrued and payable
under this Agreement to be determined. Such records shall be retained for at
least three (3) years after the close of the period to which they pertain, or
for such longer time as may be required to finally resolve any question or
discrepancy raised by Accelr8.
6.03 Upon the request of Accelr8, with reasonable notice, Schott shall permit an
independent public accountant selected and paid by Acce1r8, and bound to
confidentiality, to have access during regular business hours to such records as
may be necessary to verify the accuracy of royalty payments made or payable
hereunder. Said accountant shall disclose any such information acquired by it to
Acce1r8 only to the extent that such information should properly have been
contained in the royalty reports required under this Agreement. If an inspection
shows an underreporting or underpayment in excess of five percent (5%) for any
twelve (12) month period, then Schott shall reimburse Accelr8 for the cost of
the inspection and pay the amount of the underpayment including any interest as
required by this Agreement.
ARTICLE 7. INTELLECTUAL PROPERTY; PROSECUTION; COSTS AND ENFORCEMENT
7.01 Ownership of Inventions and Information. Ownership of Inventions shall be
determined in accordance with the following rules:
(a) Schott shall own any Inventions (including all intellectual property
rights therein) that it solely makes or conceives ("Schott Inventions").
(b) Accelr8 shall own any Inventions (including all intellectual property
rights therein) that it solely makes or conceives.
(c) For any Inventions (including all intellectual property rights therein)
that the Parties jointly make or conceive ("Joint Inventions"), the Parties
shall jointly own any Joint Inventions, subject to the restrictions in
ss.7.01(e).
(d) For all Joint Inventions that are jointly owned by the Parties, each
Party is free to utilize such Joint Invention without accounting or
reporting to the other Party, except that neither Party will assign,
license, sublicense, sell, distribute or otherwise transfer any such Joint
Inventions to any competitor of the other Party.
7.02 Prosecution and Maintenance of Patents. Each Party shall control the
preparation, filing, prosecution and maintenance (including without limitation
conducting or participating in interferences or oppositions), at its own
expense, of any and all Patents that it owns. The Parties shall jointly control
the preparation, filing, prosecution and maintenance (including without
limitation conducting or participating in interferences or oppositions), of any
and all Patents that are jointly owned by the Parties ("Joint Patents"), and to,
equally share all outside legal fees and expenses associated therewith. However,
if a Party desires not to file, prosecute, issue or maintain an application for
a Joint Patent in any particular country or jurisdiction, such Party shall
notify the other Party of its intention not to do so, and with such notice shall
relinquish its interest in the same (i.e., shall have no further ownership
interest in, license or right to use, or any costs associated therewith) in such
particular country or jurisdiction, and the other Party shall have the right,
but not the obligation to file, prosecute, issue or maintain in its name such
application or patent embodying a Joint Patent in such particular country or
jurisdiction at its own expense.
7.03 Cooperation of the Parties. At the reasonable request of the responsible
Party, the other Party agrees to reasonable efforts to cooperate in the
preparation, filing, prosecution, maintenance and defense of any Patents under
this Agreement and in the obtaining and maintenance of any patent extensions,
supplementary protection certificates and the like with respect to any Patent
claiming an Invention. Such cooperation includes, but is not limited to:
(a) executing all papers and instruments (including assignment documents),
or requiring its employees or contractors, to execute such papers and
instruments, so as to effectuate the ownership of inventions set forth in
ss.7.01, and Patents claiming such inventions, and to enable the
responsible Party to apply for and to prosecute patent applications in any
country; and
(b) promptly informing the other Party of any matters coming to the first
Party's attention that may affect the preparation, filing, prosecution or
maintenance of any such patent applications.
7.04 Infringement by Third Parties. Each Party agrees to inform the other Party
promptly in writing of any suspected infringement of the Accelr8 Technology, the
Licensed Product and/or the Patents resulting from any Inventions. The Party
owning the applicable Patent shall have the sole right to institute suit against
such Third Party, provided that the other Party shall provide all reasonable
cooperation and assistance that may be requested by the first Party, at the
first Party's expense, in any such suit, which cooperation may include joining
in such suit.
ARTICLE 8. CONFIDENTIALITY AND PUBLICATIONS
8.01 In the performance of this Agreement, each Party may disclose directly or
indirectly to the other party certain confidential information, orally or in
writing or both, including, but not be limited to, marketing plans, cost or
price data, customer or supplier information, technical information, patent
applications, and patent prosecution documents regarding the Accelr8 Technology
or the Licensed Product (collectively, "Confidential Information"). Except to
the extent expressly authorized by this Agreement or otherwise agreed in writing
by the disclosing Party, the Parties agree that, during the Term for at least
five (5) years and thereafter, the receiving Party shall keep confidential and
shall not publish or otherwise disclose and shall not use for any purpose other
than as expressly' provided for in this Agreement any Confidential Information.
A Party may use such Confidential Information only to the extent required to
accomplish the purposes of this Agreement. Neither Party will use any
Confidential Information of any other Party for any purpose or in any manner
that would constitute a violation of any laws or regulations, including, without
limitation, the export control laws of the United States. Neither Party may
reproduce any Confidential Information of any other Party in any form except as
required to accomplish the intent of this Agreement Neither Party may disclose
Confidential Information of any other Party to any employee, agent, consultant,
or sub-licensee who does not have a reasonable need for such information for
purposes of performance under this Agreement and who is not subject to binding
obligations of confidentiality and limited use at least as restrictive as those
of this Article 8. In particular, neither Party will disclose to a Third Party
any legal opinions with regard to Accelr8's Intellectual Property without first
obtaining a "Community of Interest" agreement from such Third Party that
includes Accelr8 as named in the Community of Interest. Each Party will use at
least the same standard of care as it uses to protect its own proprietary or
confidential information of a similar nature to prevent unauthorized disclosures
or uses of Confidential Information of the other Party, but in no event less
than reasonable care. Each Party will promptly notify the disclosing Party upon
discovery of any unauthorized use or disclosure of the Confidential Information
of the other Party.
8.02 The obligations of confidentiality and non-use of Confidential Information
set forth in ss.8.01 above shall not apply to any information that, as shown by
competent proof:
(a) is now, or hereafter becomes, through no act or failure to act on the
part of the receiving Party in breach hereof, generally known or available;
(b) is known by the receiving Party at the time of receiving such
information, as shown by contemporaneous written records;
(c) is hereafter furnished to the receiving Party by a Third Party, as a
matter of right and without restriction on disclosure;
(d) is independently developed by the receiving Party without use of or
reference to Confidential Information of the other Party, as shown by
independent, contemporaneous written records; or
(e) is the subject of a prior, express, written permission to disclose
provided by the disclosing Party.
The Parties agree that the material financial terms of this Agreement shall
be considered Confidential Information of both Parties. Notwithstanding the
foregoing, the Parties may disclose such terms to bona fide potential corporate
partners, potential investors or merger or acquisition partners, and to
financial underwriters and legal and financial advisors; provided. that all such
disclosures shall be made only to such parties under obligations of
confidentiality and non-use and provided the other Party is informed to whom
such disclosures will be made.
8.03 Each of the Parties may disclose Confidential Information belonging to the
other Party to the extent such disclosure is reasonably necessary for:
(a) complying with applicable court orders or governmental regulations.
Notwithstanding the foregoing, in the event that a Party is required to
make a disclosure of any other Party's Confidential Information pursuant to
ss.8.03 it will give reasonable advance notice to the other Party of such
disclosure and use efforts to secure confidential treatment of such information
at least as diligent as the other Party would use to protect its own
confidential information, but in no event less than reasonable efforts. In any
event, each of the Parties agrees to take all reasonable action to avoid
disclosure of Confidential Information hereunder. The Parties will consult with
each other on the provisions of this Agreement to be redacted in any filings
made by the parties with the United States Securities and Exchange Commission or
as otherwise required by law.
8.04 Each Party shall have the right to review and comment on any material
proposed for disclosure or publication by the other Party, such as by oral
presentation, manuscript or abstract, which utilizes Confidential Information of
the non-publishing Party. Before any such material is submitted for publication,
the Party proposing publication shall deliver a complete copy to the
non-publishing Party whose Confidential Information is utilized therein, at
least thirty (30) days prior to submitting the material to a publisher or
initiating any other disclosure. The non-publishing Party shall review any such
material and give its comments to the Party proposing publication within thirty
(30) days of the delivery of such material to the non-publishing Party. With
respect to oral presentation materials and abstracts, the non-publishing Party
shall make reasonable efforts to expedite review of such materials and
abstracts, and shall return such items as soon as practicable to the Party
proposing publication with appropriate comments, if any, but in no event later
than thirty (30) days from the date of delivery to the non-publishing Party. The
publishing Party shall comply with the non-publishing Party's requests to delete
references to the non-publishing Party's Confidential Information in any such
material and agrees to delay any submission for publication or other public
disclosure for a period of up to an additional ninety (90) days for the purpose
of preparing and filing appropriate patent applications.
8.05 The Parties shall issue a mutually acceptable press regarding this
Agreement and the Parties' collaboration upon execution of this Agreement.
ARTICLE 9. REPRESENTATIONS, WARRANTIES AND COVENANTS
9.01 ACCELR8 IS LICENSING AND PROVIDING THE ACCELR8 TECHNOLOGY ON AN "AS IS"
BASIS, AND IT MAKES NO REPRESENTATIONS NOR EXTENDS ANY WARRANTIES OF ANY KIND,
EITHER EXPRESS OR IMPLIED, WITH RESPECT TO THE ACCELR8 TECHNOLOGY OR THE USE,
SALE, IMPORT, EXPORT OR OTHER DISPOSITION BY SCHOTT, ITS AFFILIATES,
SUB-LICENSEE(S), OR THEIR VENDEES OR OTHER TRANSFEREES OF LICENSED PRODUCTS.
THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE, OR THAT THE USE, MANUFACTURE, SALE OR IMPORT OF LICENSED
PRODUCTS WILL NOT INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK, SERVICE XXXX, OR
OTHER RIGHTS OF ANY THIRD PARTY.
9.02. Accelr8 and Schott each hereby represent and warrant to the other as
follows:
(a) it is duly organized, validly existing and in good standing under the
laws of its jurisdiction of incorporation or formation, and has full
corporate or other power and authority and the legal right to (i) own and
operate its property and assets, (ii) carry on its business as it is now
being conducted and as contemplated in this Agreement, and (iii) enter into
this Agreement and to carry out the provisions hereof;
(b) it is duly authorized to execute and deliver this Agreement and to
perform its obligations hereunder, and the person or persons executing this
Agreement on its behalf has been duly authorized to do so by all requisite
corporate or partnership action; and
(c) (i) this Agreement is legally binding upon it and enforceable in
accordance with its terms, and (ii) the execution, delivery and performance
of this Agreement by it does not conflict with any written agreement,
instrument or understanding to which it is a party or by which it may be
bound, or violate any material law or regulation of any court, governmental
body or administrative or other agency having jurisdiction over it.
9.03 Nothing in this Agreement shall be construed as:
(a) A warranty or representation by Acce1r8 to the validity or scope of any
of the Accelr8 Patents;
(b) A warranty or representation that the Accelr8 Technology or anything
made, used, sold, imported or otherwise disposed of under the licenses
granted hereunder (including. without limitation, the Licensed Product)
will or will not infringe patents, copyrights or other rights of Third
Parties. However Accelr8 has, as of the Effective Date, no knowledge of any
such infringements;
(c) An obligation to furnish any know-how or technology not agreed to in
this Agreement, to bring or prosecute actions or suits against Third
Parties for infringement or to provide any services other than those
specified in this Agreement.
9.04 Schott covenants that it shall:
(a) cause Licensed Products sold under this Agreement to be marked with the
notice of the patent numbers or patent pending, as may be legally required.
(b) comply with all laws and regulations of the United States and any other
country as appropriate concerning or controlling the import or export of
Licensed Products.
(c) comply with all laws and regulations of the country as concerned with.
regard to. the manufacture. marketing, promotion or distribution of
Licensed Products.
(d) appropriately label Licensed Products for use and sale, including,
without limitation, restrictions in the instructions for use prohibiting
use for medical purposes.
9.05 Except in connection with liability for breach of Article 8 or 9, no Party
shall be entitled to recover from the other Party any special, incidental,
indirect, consequential or punitive damages in connection with this Agreement or
any license granted hereunder, provided, however, that this ss.9.0S shall not be
construed to limit any Party's indemnification obligations under Article 10 or
any remedies available at law for a violation of a Party's intellectual property
or proprietary rights.
ARTICLE 10. INDEMNIFICATION AND INSURANCE
10.01 Schott Indemnification. Schott shall indemnify and hold Accelr8 and its
Affiliates, and their respective officers, directors, employees, consultants and
agents (each, an "Accelr8 Indemnitee") harmless from and against all liability,
damages, losses, costs and expenses including reasonable attorneys fees and
expenses (collectively, "Losses"), in connection with a claim asserted by a
Third Party for death, personal injury, illness, property damage, noncompliance
with applicable laws and any other Third Party claim, proceeding, demand, (each,
a "Third Party Claim") in connection with or arising out of:
(a) any use of the Accelr8 Technology in a manner not expressly permitted
under the licenses granted to Schott hereunder,
(b) the design, manufacture, use, production, marketing, sale or
distribution of Licensed Products;
(c) any representation or warranty made by Schott in Article 9 of this
Agreement; or
(d) the gross negligence or willful misconduct of Schott; or
(e) any claims that the manufacture, use, sale or import of the Licensed
Products solely done by or through Schott infringes or violates any patent
or other rights of Oxford Gene Technology. However, no indemnification
applies by Schott for Accelr8 and its Affiliates, and their respective
officers, directors, employees, consultants and agents (each, an "Accelr8
Indemnitee") for any actions arising from, but not limited to, ss.2.03 and
ss.2.04.
10.02 Control of Defense. Accelr8 shall give prompt written notice of the Third
Party Claim to Schott and Schott shall defend against such Third Party Claim
with the reasonable cooperation of the Accelr8 Indemnitee; provided that (i)
Accelr8 shall have the exclusive right to control the defense or settlement of
any Third Party Claim involving the validity, enforceability or scope of any
Accerl8 Intellectual Property or Patents owned by Accelr8 notwithstanding
anything to the contrary herein, and (ii) subject to item (i) above, the Accelr8
Indemnitee will not settle any such Third Party Claim without the prior written
consent of Schott, which consent shall not be unreasonably withheld, conditioned
or delayed. Each Accelr8 Indemnitee shall have the right to be present in person
or through counsel at substantive legal proceedings relating to the applicable
Third Party Claim.
ARTICLE 11. DURATION, TERMINATION AND CONVERSION
11.01 Term. This Agreement shall become effective as of the Effective Date and
shall have a two (2) year term, unless earlier terminated pursuant to ss.11.02.
Thereafter this Agreement is extended for the one (1) year Renewal Term upon
written agreement of the Parties, where Schott has the right to choose the from
of renewal as described in ss.5.02 b) and c).
11.02 Termination. This Agreement shall terminate if either Party gives written
notice to the other Party of the other Party's material breach of the terms of
this Agreement, and the other Party fails to cure such breach within thirty (30)
days of its receipt of such notice.
11.03 Effect of Termination.
(a) Upon termination of this Agreement, the licenses and rights granted to
Schott hereunder shall immediately terminate, provided that Schott shall
have the right to continue to sell (but not manufacture) the Licensed
Product in its inventory as provided in ss.11.03(b).
(b) Schott may dispose of all previously made Licensed Products within one
hundred and twenty (120) days after the effective date of such termination,
provided, however, that the sale of such Licensed Products shall remain
subject to the terms of this Agreement including, but not limited to, the
payment of royalties at the rate and at the time provided herein and the
rendering of royalty reports thereon.
(c) Within thirty (30) days following the expiration or termination of this
Agreement, each Party shall deliver to the other Party any and. all copies
of any documents or tangible items that contain any Confidential
Information of the other Party in its possession or under its control.
11.04 Accrued Rights and Obligations: Survival. Expiration or termination of
this Agreement shall not affect any accrued rights or obligations of any Party.
The provisions of Articles 6-10 and 12-13, and ss.2.04, 5.03-5.07, and
11.03-11.06 of this Agreement shall survive expiration or termination of this
Agreement for any reason (subject to any subsequent dates of termination
referred to in such individual Articles and Sections).
11.05 Exercise of Rights to Terminate. If any Party elects to terminate this
Agreement pursuant to the terms of this Article 11, such Party will not be
required to compensate the other Party for any damage or loss that such other
Party may suffer as a result of the terminating Party exercise of its rights
under this Article 11.
11.06 Damages: Relief Subject to ss.11.05 above, termination of this Agreement
shall not preclude either Party from claiming any other damages, compensation or
relief that it may be entitled to under the terms of this Agreement or at law or
equity upon such termination.
ARTICLE 12. DISPUTE RESOLUTION
12.01 In the event of any dispute arising out of or relating to this Agreement,
the affected Party shall promptly notify the other party ("Notice Date"), and
the Parties shall attempt in good faith to resolve the matter. Any disputes not
so resolved shall be referred to senior executives of the Parties, who shall
meet at a mutually acceptable time and location within thirty (30) days of the
Notice Date and shall attempt to negotiate a settlement. If the senior
executives of the Parties fail to meet within thirty (30) days of the Notice
Date, or if the matter remains unresolved for a period of sixty (60) days after
the Notice Date, either Party may at any time thereafter and upon notice to the
other Party, submit such dispute to be finally settled by arbitration
administered by the American Arbitration Association in accordance with its
International Arbitration Rules, as such rules may be modified by the following
provisions of this Article 12.
12.02 Not later than 30 days after commencement of the arbitration, the Parties
shall select one arbitrator from the AAA's Roster of Neutrals, provided that
such arbitrator shall in any event be a patent attorney with significant
experience in the biotechnology industry. If the Parties are unable to agree on
an arbitrator, an arbitrator meeting the above qualifications shall be selected
in accordance with AAA's rules not later than 60 days after commencement of the
arbitration. The place of the arbitration shall be Denver, Colorado.
12.03 The arbitration shall be governed by the substantive laws of the State of
Colorado without regard to conflict of law rules, Title 9 of the US Code (United
States Arbitration Act) and the Commercial Arbitration Rules of the American
Arbitration Association, except to the extent expressly limited by this Article
12.
12.04 Each Party shall have the right to request from the arbitrators, and the
arbitrators shall order upon good cause shown, reasonable and limited pre
hearing discovery, including (a) exchange of witness lists, (b) depositions
under oath of named witnesses at a mutually convenient location, (c) written
interrogatories, and (d) document requests. Any dispute regarding discovery, or
the relevance or scope thereof, shall be determined by the arbitrator, which
determination shall be conclusive. All discovery shall be completed' within
forty five (45) days following the appointment of the arbitrator. Upon.
conclusion of the pre-hearing discovery, the arbitrator shall promptly hold a
hearing upon the evidence to be adduced by the Parties and shall promptly render
a written opinion and award.
12.05 The arbitrator will have no authority to award any damages inconsistent
with the terms of this Agreement except as may be required by statute. Judgment
on the award may be entered by any court of competent jurisdiction.
12.06 Each Party shall bear its own costs and expenses in relation to such
arbitration, provided however, that the Parties shall share equally the costs
and expenses of the arbitrator.
ARTICLE 13. MISCELLANEOUS
13.01 Assignment. Except as expressly provided hereunder, no Party may assign or
transfer this Agreement or any rights or obligations hereunder without the prior
written consent of the other Party (which consent shall not be unreasonably
withheld); provided, however, that any Party may assign this Agreement and its
rights and obligations hereunder without the other Party's consent to an
Affiliate or in connection with the transfer or sale to a Third Party of all or
substantially all of the assets or outstanding capital stock of such Party,
whether by merger, sale of stock, or sale of assets. The rights and obligations
of the Parties under this Agreement shall be binding upon and inure to the
benefit of the successors and permitted assigns of the Parties. Any assignment
not in accordance with this Agreement shall be void.
13.02 Governing Law. This Agreement shall be governed by and construed in
accordance with the laws of the State of Colorado, excluding its choice of law
principles.
13.03 Notices. Any notice or other communication required or permitted to be
given to any Party hereto shall be in writing unless otherwise specified and
shall be deemed to have been properly given and effective: (a) on the date of
delivery if delivered in person; (b) the date of electronically confirmed
facsimile transmission if during the recipient's normal business hours, or
otherwise on the next business day of the recipient; (c) one (1) business day
after sending via next business day delivery by a nationally recognized
overnight courier service; or (d) three (3) days after mailing by registered or
certified mail, postage prepaid and return receipt requested, to the Party to be
notified at the following address or facsimile number:
In the case of Accelr8:
Accelr8 Technology Corporation
0000 Xxxxx Xxxxxxxx, Xxxx 0-000
Xxxxxx, Xxxxxxxx S0221
Facsimile: 1-303-863-121S
Attention: Xxxxxx X. Xxxxxx, Chairman and CEO CC:
In the case of Schott:
Xxxxxx Jenaer Glas GmbH
Xxxx-Xxxxxx-Xxxxxxx 00
00000 Xxxx, Xxxxxxx
Facsimile: 00-0000-000000
Attention: Xx. Xxxx Xxxxxxxx, General Manager Xxxxxx Nexterion CC:
Any Party may change its address for communications by a notice to the other
Parties in accordance with this ss.13.03.
13.04 Use of Name. Accelr8 grants to Schott the right to use Accelr8's name in
the promotion of the Licensed Product.
13.05 Entire Agreement The terms and provisions contained in this Agreement
(including any and all Appendices referred to herein) constitute the entire
Agreement between the Parties and shall supersede all previous communications,
representations, agreements or understandings, either oral or written, between
the parties hereto with respect to the subject matter hereof: and no agreement
or understanding varying or extending this Agreement will be binding upon any
Party hereto, unless in writing which specifically refers to this Agreement,
signed by duly authorized officers or representatives of each of the Parties,
and the provisions of this Agreement not specifically amended thereby shall
remain in full force and effect according to their terms. This Agreement
expressly supercedes and replaces the terms of the Letter of Intent between the
Parties dated October 15, 2003, and the terms of the Supply Agreement between
the Parties dated October 15, 2003.
13.06 Severability. The provisions and clauses of this Agreement are severable,
and in the event that any provision or clause is determined to be invalid or
unenforceable under any controlling body of the law, such provision or clause
shall, if possible, be interpreted to achieve the intent of the Parties to this
Agreement to the extent possible rather than voided. In any event, such
invalidity or unenforceability will not in any way affect the validity or
enforceability of the remaining provisions and clauses hereof.
13.07 No Agency. The Parties relationship, as established by this Agreement, is
solely that of independent contractors. This Agreement does not establish a
joint venture, partnership or similar business relationship among the Parties,
except as expressly set forth herein. No Party is a legal representative of any
other Party hereto, and no Party can assume or create any obligation,
representation, warranty or guarantee, express or implied, on behalf of any
other Party for any purpose whatsoever.
13.08 Waiver. The failure of a Party to insist upon strict performance of any
provision of this Agreement or to exercise any right arising out of this
Agreement shall neither impair that provision or right nor constitute a waiver
of that provision or right, in whole or in part, in that instance or in any
other instance. Any waiver by a Party of a particular provision or right shall
be in writing, shall be as to a particular matter and, if applicable, for a
particular period of time and shall be signed by such Party.
13.09 Amendment. This Agreement may only be modified or supplemented in a
writing expressly stated for such purpose and signed by duly authorized
representatives of the Parties to this Agreement.
13.10 Counterparts. This Agreement may be executed in any number of
counterparts, each of which shall be deemed an original but all of which
together shall constitute a single instrument.
13.11 No Third Party Rights or Obligations. No provision of this Agreement shall
be deemed or construed in any way to result in the creation of any rights or
obligation in any Third Party.
13.12 Titles and Subtitles. The titles of the sections and subsections of this
Agreement are for convenience of reference only and are not to be considered in
construing this Agreement.
13.13 Cumulative Rights. The rights, powers and remedies hereunder shall be in
addition to, and not in limitation of: all rights, powers and remedies provided
at law or in equity, or under any other agreement between the Parties. All of
such rights, powers and remedies shall be cumulative, and may be exercised
successively or cumulatively.
[Remainder of Page Intentionally Left Blank]
IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be
executed in duplicate by their respective duly authorized officers.
ACCELER8 TECHNOLOGY CORPORATION XXXXXX JENAER GLAS GMBH
By: __________________________ By: __________________________
Name: ________________________ Name: ________________________
Title: _______________________ Title: _______________________
By: __________________________
Name: ________________________
Title: _______________________
