EXHIBIT 10.15
LICENSE AGREEMENT
THIS AGREEMENT, dated as of May 4, 2000, is between MediChem Research,
Inc., ("Licensee"), and Advanced Life Sciences, Inc., ("Licensor"), and shall
modify and amend the previous Agreement dated July 1, 1999, between MediChem
Research, Inc., ("Licensee"), and Advanced Life Sciences, Inc., ("Licensor").
WITNESSETH
WHEREAS, Licensor represents that it has applied for the patent entitled
"Use of Automated Technology In Chemical Process Research And Development" (U.S.
Patent Application Number 08/862,840), and owns and controls know-how rights
relating to the Licensed Technical Information (hereinafter defined); and
WHEREAS, Licensee desires to receive, and Licensor desires to grant to
Licensee exclusive rights under such patent and to such technical information in
the Licensed Territory (hereinafter defined), and Licensee desires to accept
such rights, in accordance with the terms set forth below.
NOW, THEREFORE, intending to be legally bound, the parties hereby agree as
follows:
1. Definitions
1.1 "Licensed Patent" means the patent entitled "Use of Automated
Technology In Chemical Process Research And Development" (U.S. Patent
Number: 6044212). The Licensed Patent shall include all divisionals,
continuations, continuations-in-part, re-examinations, and reissues
thereof.
1.2 "Licensed Technical Information" means unpublished research and
development information, unpatented inventions, know-how, trade secrets,
and technical information relevant to the Licensed Patent in the possession
of Licensor or any of its Affiliates (hereinafter defined) at the Effective
Date of this Agreement.
1.3 "Exclusive License" means a license granting Licensee the right to
make, use and sell the Licensed Products (hereinafter defined), to the
exclusion of all other parties including Licensor.
1.4 "Licensed Products" means any products derived from the use,
development to and/or the improvement of the Licensed Patent.
1.5 "Licensed Territory" means all the countries of the world.
1.6 "Affiliate" means, with respect to each party, any corporation or
other legal entity that directly or indirectly controls, is controlled by,
or is under common control with, the party, but only for so long as said
control continues. For purposes of this definition, "control" means the
power, whether or not normally exercised, to direct the management and
affairs of another corporation or other legal entity, directly or
indirectly, whether through the ownership of voting securities, by contract
or otherwise. In the case of a corporation, the direct or indirect
ownership of fifty percent (50%) or more of its outstanding voting shares
shall in any case be deemed to confer control, provided that the direct or
indirect ownership of a lower percentage of such securities shall not
necessarily preclude the existence of control.
1.7 Effective Date shall mean the date upon which both parties sign the
agreement.
1.8 "Net Sales" shall mean the total gross receipts for sales of Licensed
Products by or on behalf of Licensee or its sublicensees, and from selling,
leasing, renting or otherwise making Licensed Products available to others
whether invoiced or not, less returns and allowances actually granted in
the normal course of business including but not limited to trading, packing
costs, insurance costs, freight out, taxes or excise duties imposed on the
transaction (if separately invoiced), and wholesale and cash discounts in
amounts customary in the trade. No deductions shall be made for commissions
paid to individuals, whether they be with independent sales agencies or
regularly employed by Licensee, or sublicensee, and on its payroll, or for
the cost of collections.
1.9 "Commercial Use" shall mean the satisfactory completion of an
automated process research project conducted under contract for a customer
of the Licensee.
1.10 "Peer Reviewed Journal" shall include any scientific, biotechnology,
and/or pharmaceutical related journal in which manuscripts are reviewed and
approved by a board of editors.
2. Confidentiality
2.1. Licensee will hold Licensor's Confidential Information in the
strictest confidence using such reasonable measures as it uses to protect
the confidentiality of similar information belonging to it. All written (or
otherwise recorded) originals and copies of confidential information must
be returned to Licensor with the exception of one copy being reserved for
file purposes only. The parties will use Confidential Information solely to
perform the activities under this Agreement and will disclose Confidential
Information only to their employees or contractors with a need to know such
information. Notwithstanding the other provisions of this Agreement,
nothing received by Licensee shall be considered Licensor's Confidential
Information which (a) is now available or becomes available to the public
without breach of this Agreement, (b) is released in writing by Licensor,
(c) is lawfully obtained from a third party or parties, (d) is known to the
Licensee prior to such disclosure, or (e) is at any time developed by
Licensee independent of such disclosure. Licensor further agrees to release
Licensee from any duty of confidentiality after seven (7) years have
expired from the time of termination of the agreement.
3. Warranty of Title
3.1. Licensor represents and warrants it is the sole owner of the Licensed
Patent and the Licensed Technical Information, and that it has the right to
grant the License described in this Agreement.
4. License Grant
4.1 Licensor grants to the Licensee an exclusive license to use the
Licensed Patent and assign the Licensed Technical Information in the
Licensed Territory. Licensor further agrees to grant to Licensee an
exclusive license under the Licensed Patent to make, use, and sell the
Licensed Products, in and into the Licensed Territory. Licensee shall have
the right to sublicense, in part or in whole, the Licensed Patent or
Licensed Technical Information, and shall have the right to procure
manufacturing from third party contractors who are bound by confidentiality
terms at least as strong as in this Agreement. Licensor shall, within
thirty (30) days of the effective date of this Agreement make available to
Licensee for its use the Licensed Technical Information in Licensor's
possession needed to make the Licensed Products.
4.2 Licensor agrees to keep Licensee fully and promptly informed of the
status of the prosecution of
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the Licensed Patent and (c) consult with Licensee on all aspects of the
prosecution of this application.
5. Patent Infringement
5.1 In the event of third party infringement of the Licensed Patent in the
Licensed Territory, the parties will develop a mutually acceptable plan for
abatement of the infringement and shall contribute toward attorney's fees
and costs in proportion to the loss of royalties or profits being caused by
the infringement. In any lawsuit for infringement, both parties shall be
named as plaintiffs, Licensor shall control all aspects of the lawsuit, and
any award or settlement shall be divided in proportion to each party's loss
of royalties or profits.
6. Technical Assistance by Licensor
6.1 Licensor will provide consulting services related to process described
in the Licensed Patent upon request of Licensee.
7. Indemnification
7.1 Licensee agrees to defend, indemnify, and hold Licensor harmless
against all claims and actions as a result of any sales, property damage,
or personal injury sustained by Licensee, its employees, or other third
parties, as a result of use of the Licensed Patent or the Licensed
Technical Information. Licensee will carry adequate product liability
insurance.
8. Royalties & Milestones
8.1 Licensee will pay Licensor a royalty of eight percent (8%) of all Net
Sales of any of the Licensed Products.
8.2 Licensor agrees to pay Licensee a milestone payment of $400,000.00
upon demonstrated Commercial Use.
8.3 Licensor agrees to pay Licensee a milestone payment of $400,000.000
upon successful issuance of the Licensed Patent from the United States
Patent and Trademark Office.
8.4 Licensor agrees to pay Licensee a milestone payment of $200,000.000
for each publication in a Peer Reviewed Journal.
9. Intellectual Property
9.1 Licensee agrees that Licensor will own all of the intellectual
property rights that arise from Licensee inventions including developments
to or improvements on the Licensed Patent.
10. Promotions and Marketing
10.1 Both parties agree that, in promotions and marketing of the
technology, Licensee and Licensor will use their names in conjunction with
one another.
11. Term and Termination
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11.1. This Agreement may be terminated earlier by one or more of the
following events:
1. The mutual, written agreement of the Parties to terminate the Agreement;
2. If a party to this Agreement makes a material breach of any provision
herein, the non-breaching party will, in writing, provide the breaching
party thirty days (30) to cure the breach.
If not cured within the thirty-day period, the non-breaching party can, in
writing, terminate this Agreement;
3. The filing for bankruptcy, the acquisition, or the sale of a party to
this Agreement will result in the termination of this Agreement; or
5. The Licensed Patent expires.
12. Applicable Law
12.1 The applicable law governing any cause of action arising out of this
Agreement, or the performance by a party hereto, shall be governed by the
laws of the United States of America and the State of Illinois.
13. Severability
13.1 If any one or more of the provisions of this Agreement shall be held
to be invalid, illegal or unenforceable, the validity, legality or
enforceability of the remaining provisions of this agreement shall not in
any way be affected or impaired thereby.
14. Miscellaneous
14.2 Nothing contained herein, or done in pursuance of this Agreement,
shall constitute the parties as entering into a legal partnership, joint
venture, or any other business entity or business relationship other than
that expressly described in this Agreement, or shall constitute a party
hereto the agent for the other party for any purpose or in any sense
whatsoever. This Agreement embodies the entire understanding of the parties
with respect to the subject matter contained herein and shall supersede all
previous communications, representations or understandings, either oral or
written, between the parties relating to the subject matter hereof. No
amendment or modification of this Agreement shall be valid or binding upon
the parties unless signed by their respective duly authorized officers.
IN WITNESS WHEREOF, each of the parties hereto has caused this Agreement to be
executed by its duly authorized officer or representative as of the date set
forth below.
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Advanced Life Sciences, Inc. MediChem Research, Inc.
__________________________ ______________________________
Xxxxxxx X. Xxxxxx, Ph.D. Xxxx X. Xxxxxx
President and CEO Vice President of Operations
__________________________ _____________________________
Date Date
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