EXCLUSIVE LICENSE AGREEMENT
This
Exclusive License Agreement (this "Agreement'), dated and effective as of
February 28,2008 (the “Effective
Date"), is between the Oregon
Health & Science University, having offices at 0000 XX 0xx Xxx, Xxxxx 000
Xxxxxxxx, Xxxxxx 00000-0000 ("OHSU”), and Znomics, Inc., having
offices at 0000 XX xx Xxx, Xxxxx 000, Xxxxxxxx, Xxxxxx 00000 ("Licensee").
1. BACKGROUND
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1.1
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OHSU
is the owner
of certain inventions and discoveries generally described as "A Genetic
Zebrafish model of Obesity" as more specifically covered by OHSU Invention
Disclosure #1236 and described in FASEB J. 2007 J ul;21
(9):2042-9 and Endocrine
2003 Dec;22(3):257 -265, copies of the publications are attached as
Appendix .A. OHSU wants those inventions and discoveries to be utilized
for the public benefit to the fullest extent
possible.
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1.2
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Licensee
wishes to obtain from OHSU, and OHSU is willing to grant to Licensee, a
license to exploit the OHSU inventions and discoveries described in this
Agreement, subject to the terms and conditions set forth
below.
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2. DEFINITIONS
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2.1
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"Affiliate" means any entity that
controls, is
controlled by ot is under common control with Licensee, where
"control" means beneficial ownership of more than 50% of the outstanding
voting securities of an entity or the ability otherwise to elect a
majority of the board of directors or other managing
authority.
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2.2
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"Confidential
Information"
means all confidential scientific, technical and business
information of a party to this Agreement designated as confidential by
such party. The term "Confidential Information" does not include any
information that the recipient can demonstrate (a) is part of the public
domain or becomes known publicly through no fault of the recipient; (b)
was already known to recipient prior to disclosure as demonstrated through
adequate written records; (c) is disclosed to recipient by a third party
\who has the right to make such disclosure; (d) can be demonstrated
through adequate written records to have been developed independently of
the information obtained from the other party; or (e) is required to be
disclosed by mw, including the Oregon Public Records Law, to comply with
government regulations, subpoenas ot court orders provided the disclosing
party receives adequate notice of such demand and provided recipient makes
any such disclosure under an order protecting the confidential nature of
proprietary information.
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2.3
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"Field of
Use" means
the making and using of the Licensed Technology for any and all
purposes.
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2.4
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"Licensed
Proprietary Information" means unpublished
information concerning the use, development, characterization and care of
the Licensed Proprietary Material.
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2.5
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"Licensed
Proprietary Material” means transgenic
zebra fish with constitutive ectopic expression of AgRP mRNA and all
progeny, modified and unmodified derivatives
thereof.
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2.6
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"Licensed
Technology"
means the Licensed Proprietary Material and the Licensed
Proprietary Information.
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2.7
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"Term" means the period
beginning on the Effective Date and ending on the date which is five (5)
years thereafter.
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3. OWNERSHIP & GRANT OF
RIGHTS
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3.1
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Ownership of Licensed
Technology. Licensee acknowledges that OHSU owns the licensed
Technology .
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3.2
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Authority. OHSU
represents and warrants that subject to the limitations described in
Section 7, OHSU is entitled and authorized to grant the rights specified
in this Agreement.
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3.3
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Exclusive License.
Subject to the terms and conditions of this Agreement, OHSC hereby grants
to Licensee upon receipt of payments stated herein a nonsublicensable,
exclusive license, to make and use the Licensed Technology for the Field
of Use.
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3.4 Retained Rights.
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(a)
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OHSC
reserves the right to (i) practice and use the Licensed Technology, (ii)
distribute biological and other materials related to the Licensed
Technology; and (iii) grant non· exclusive licenses to other universities,
academic institutions and non-profit research organizations to practice
and use the licensed Technology for research and educational purposes
only; and (iv) publish any scientific findings or other information
included in the Licensed
Technology.
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(b)
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This
Agreement does not confer any license or rights by implication, estoppel
or otherwise in any patents, know-how or other technology that is not
explicitly granted to Licensee in this Section 3, and OHSU expressly
retains those rights.
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3.5
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Government Rights. OHSU
reserves on behalf of the U.S. Government a license with respect to the
Licensed Technology to the extent requited under any applicable law or
regulation, including 35 use Section 200 et. seq. and 37 CFR Part 401. To
the extent there is a conflict between any such law or regulation and the
terms of this Agreement, the terms of d1e applicable law or regulation
will prevail.
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4. LICENSE CONSIDERATION AND
PAYMENTS
As
consideration for the rights granted to Licensee under this Agreement, Licensee
will pay OHSU the following compensation:
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4.1
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License Issue Fee.
licensee will pay OHSU a license issue fee in the amount of Twenty
Thousand Dollars ($20,000). Fifty percent (50%) of this license issue fee
shall be paid to OHSU within 30 days of the Effective Date. The remaining
fifty percent (50%) of this license issue fee shall be paid to OHSU no
hirer than the first (1st) anniversary of the Effective Date. This fee is
fully earned and nonrefundable as of the Effective
Date.
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4.2
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Payment
Terms
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(a)
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Except
as expressly provided otherwise in this Agreement, all payments are due
and payable (i) within 30 days from the date of the invoice; or (ii) on
the date specified in this Agreement, whichever is
earlier.
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(b)
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Any
unpaid invoices or payments will be subject to a late fee of 1.0% per
month (12% per annum) until paid.
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(c) All
amounts payable to OHSU under this Agreement arc payable in United States
Dollars.
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(d)
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All
amounts payable to OHSU under this Agreement are net of all taxes and
other charges, and Licensee will be responsible for paying all taxes that
may be levied by any taxing authority on account of license fees or any
other sums payable under tills
Agreement.
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4.3
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Shipment
of Licensed Technology. Licensed Technology will be shipped at Licensee's
expense using the following Courier and Account Number: Federal Express,
account #00000-0000-0. Following OHSU’s receipt of the first
50% of the License Issue Fee as set forth in Section 4.1, OHSU will use
its reasonable best efforts to promptly transfer to Licensee the Licensed
Proprietary Materials.
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5. RESTRICTIONS
5.1 Endorsement: Use of OHSU's
name.
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(a)
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Licensee
will not use the name, image, trade or service marks, landmarks,
monuments, likeness, logos or any other distinguishing feature of OHSU or
any employee of OHSU in any press release, general publication,
advertising, marketing, promotional or sales literature, in each case
without the prior written consent of
OHSU.
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(b)
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By
entering into this Agreement, OHSU does not directly or indirectly endorse
any product or service provided, or to be provided, by Licensee. Licensee
will not state or imply that this Agreement is an endorsement by OHSLJ, or
any of its employees.
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(c) Licensee
will not make any warranty on behalf of OHSU.
6. CONFIDENTIAL
INFORMATION
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6.1
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Each
party to this Agreement who receives Confidential Information (the
"recipient") from the other party (the "disclosing party”) will protect
and keep that Confidential Information secret and will not (a) disclose
that Confidential Information to any person other than to recipient's
employees and independent contractors with a need to know who have signed
written confidentiality agreements that are as protective of that
information as this Section 6; or (b) use that Confidential Information
for any purpose other than to exercise its rights and perform its
obligations under this Agreement. Notwithstanding the preceding, the
recipient is authorized to disclose any Confidential Information
specifically required by order of any governmental agency or court so long
as before the delivery of that information, the recipient gives the
disclosing party
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prompt
written notice (if permitted by law) so the disclosing party can seek an
appropriate protective order or exemption from that order. Without in any way
limiting the preceding, the parties acknowledge and agree that the Licensed
Proprietary Information constitutes the Confidential Information of
OHSU.
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7.
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DISCLAIMER
OF WARRANTIES AND OBLIGATIONS; LIMITATION OF
LIABILITY
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7.1
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OHSU makes no representations
whatsoever (a) with regard to the scope, accuracy, completeness or
usefulness of the Licensed 'Technology; or (b) that the Licensed
Technology can be exploited without infringing other patents or other
intellectual property rights of third parties; or (c) that the Licensed
Technology will accomplish any particular results or are safe or fit for
any purpose.
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7.2
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Except
as expressly provided in this Agreement, all information, materials,
services, intellectual property and other property or rights granted or
provided by OHSU under this Agreement are on an AS IS basis, and OHSU
makes no other warranties, expressed or implied, as to any matter, and
OHSU expressly disclaims the warranties of merchantability, fitness for a
particular purpose, exclusivity or results obtained from
use.
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7.3
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In
no event will OHSU be liable for any incidental, consequential, special or
punitive damages resulting from the use of the Licensed Technology or
Licensee's exercise of any other rights under tIus
Agreement.
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7.4
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OHSU
expressly disclaims any representation or warranty that the Licensed
Technology complies with any law, statute, regulation or implied
warranties of any jurisdiction outside the United States of
America.
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8. INDEMNIFICATION
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8.1
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Licensee
will indemnify, defend and hold harmless OHSU, its directors, trustees,
officers, employees, students, fellows, agents, consultants, the sponsors
of the research that led to the Licensed Technology and the inventors of
the Licensed Technology from and against all claims, liability, demands,
damages, costs, expenses (including attorney fees and costs) and losses,
including for death, personal injury, illness and property damage, arising
from or relating in any way to this Agreement or the Licensed Technology,
including: (a) the use by or on behalf of Licensee, their customers,
suppliers, independent contractors and other third persons of any Licensed
Technology; and (b) the design, manufacture, distribution, storage, sale
or use of any products or processes developed in connection with or
arising out of the Licensed Technology. To the extent necessary to
indemnify and hold OHSU harmless from any claims by any employees of
Licensee, and to the extent permitted by law, Licensee expressly waives any
immunity or exemption from liability for the personal injury or death of
its employees that may exist under, or any right to receive contribution
from OHSU created by, the workers' compensation laws of the state where
the injury occurs or the employee is
located.
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9. TERM AND
TERMINATION
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9.1
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This
Agreement is effective as of the Effective Date and unless sooner
terminated under this Section 9, will expire at the end of the
Term.
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9.2
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OHSU's Termination
Rights. OHSU may terminate this Agreement upon the occurrence of
anyone or more of the following
events:
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(a)
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Licensee
fails to pay any amount due under this Agreement within 10 days after
Licensee receives written notice of that
failure;
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(b) Licensee
breaches Section 6 (Confidential Information);
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(c)
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Licensee
fails to cure any breach of any of its other obligations under this
Agreement within .30 days after Licensee receives written notice of that
breach;
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(d)
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Licensee
becomes insolvent or becomes the subject of any bankruptcy or other debtor
relief proceeding, and in the case of an involuntary proceeding, that
proceeding is not dismissed within 90 days; and!
or
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9.3
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Licensee's Termination
Rights. Licensee may terminate this Agreement by giving OHSU 60
days written notice and paying OHSU all sums then due and
payable.
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9.4
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Consequences of
Termination. Upon any early termination of this Agreement for any
reason whatsoever:
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(a)
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All
rights licensed or transferred by OHSC to Licensee under this Agreement
will revert. to non-exclusive
rights;
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(b)
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Licensee
will not be discharged from any liability or obligation to OHSU that arose
or became due or payable before the effective date of the
termination;
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(c)
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Sections
.3.1 (Ownership of Licensed Technology), 4.1 (License Issue Fee), 5
(Restrictions), 7 (Disclaimer of Warranties and Obligations; Limitation of
Liability), 8 (Indemnification) and 10 (General Provisions) of this
Agreement will survive.
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9.5
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Consequence of
Expiration. Upon the regularly scheduled expiration of this
Agreement at the end of the Term, Licensee shall have a fully-paid up
non-exclusive license to the Licensed Technology for the Field of
Use.
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10.
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GENERAL
PROVISIONS
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10.1
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Notices. All notices,
payments and other communications required or permitted under this
Agreement will be in writing and sent by prepaid, first class, registered
or certified mail, properly addressed to the other xxxxx as
follows:
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If
to OHSU:
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Attention:
Director
Technology
and Research Collaborations, AD120
Oregon
Health & Science University
0000
XX Xxxxx Xxxxxx, Xxxxx 000
Xxxxxxxx,
XX 00000-0000
Telephone:
000-000-0000
Facsimile: 000-000-0000
Email:
xxxxxxxx@xxxx.xxx
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If
to Licensee:
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Attention:
Xx. Xxxxxxx Xxxxxxxx
0000
XX 0xx
Xxx, Xxxxx 000 Xxxxxxxx,
Xxxxxx
00000-0000
Phone:
000-000-0000 x000
Fax:
000-000-0000
Email:
xxxxxxxx@xxxxxxx.xxx
TAX
ID#:00-0000000
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All
notices and communications will be effective on the date of the postmark of that
notice or communication. Either party may change its address by giving notice of
that change to tile other party.
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10.2
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Waivers. "Neither party
will be deemed to have waived any of its rights under this Agreement until
it has signed a written waiver of those rights. Without limiting the
preceding, no failure or delay by either party in exercising any rights,
powers or remedies under this Agreement will operate as a waiver of any
such right, power or remedy, and no waiver will constitute a waiver of any
other provision, breach, right or remedy, nor will any waiver constitute a
continuing waiver or be effective except for the specific instance and for
the specific purpose given.
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10.3
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Amendments. If either
party wishes to modify this Agreement, the parties will confer in good
faith to determine the desirability of such modification. No modification
will be effective until a written amendment is signed by both parties to
this Agreement.
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10.4
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Assignment. Licensee
will not assign or transfer its interests in nor delegate its obligations
under this Agreement, whether by transfer, merger, operation of law or
otherwise without OHSU's 'written consent. A change in the control of
Licensee (voting or otherwise) will be deemed an assignment for purposes
of this Section.
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10.5
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Governing Law; Jurisdiction and
Venue. This Agreement will be governed by and construed in
accordance with the laws of the State of Oregon without reference to its
choice of law provisions or the International Convention on the Sale of
Goods. Any claim, action or suit Between OHSU and Licensee that arises out
of or relates to performance of this Agreement will be brought and
conducted solely and exclusively within the Circuit Court for Multnomah
County, Oregon, and Licensee consents to the jurisdiction of and venue in
those courts. However, if any such claim, action or suit may be brought
only in a federal forum, it will be brought and conducted solely and
exclusively within the United States District Court of
Oregon.
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10.6
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Severability. If any
provision of this Agreement is rendered invalid or unenforceable by any
law or regulation, or declared null and void by any court of competent
jurisdiction, that part will be reformed, if possible to conform to law
and if reformation is not possible, that part will be deleted and the
remainder of the provisions of this Agreement will, subject to this
paragraph, remain in full force and effect, unless enforcement of this
Agreement without the invalid or unenforceable clause would be grossly
inequitable under the circumstances or would frustrate the primary purpose
of this Agreement.
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10.7
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Compliance with Law.
Licensee agrees to comply with all federal, state, county and local laws,
ordinances and regulations. Failure or neglect on the part of the Licensee
to comply with any or all such laws, ordinances, rules and regulations
will not relieve the Licensee of these obligations nor of the requirements
of this Agreement.
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10.8
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Dispute Resolution. The
parties agree to attempt to settle amicably any controversy or claim
arising under this Agreement or a breach of this Agreement. Thereafter,
both parties agree that all disputes between them arising out of or
relating to this Agreement will be submitted to non-binding mediation
unless the parties mutually agree otherwise. The parties agree to exercise
their best effort in good faith to resolve all disputes in
mediation.
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10.9
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Independent Contractor;
Agency. The parties are separate and independent legal entities,
and each is an independent contractor. Neither party will be deemed to be
the employee, representative, agent, joint venturer or partner of the
other party for any purpose. Neither party has the authority to bind the
other or to incur any liability on behalf of the other, nor to direct the
employees of the other.
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10.10
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Interpretation. Both
parties have had the opportunity to have this Agreement reviewed by their
attorneys. Therefore, no rule of construction or interpretation that
favors or disfavors either party will apply to the interpretation of this
Agreement. Instead, this Agreement will be interpreted according to the
fair meaning of its terms. The captions or headings of this Agreement arc
for convenience of reference only. They will not limit or otherwise affect
the meaning or interpretation of any provision of this Agreement The words
"includes" and "including" ate not limited in any way and mean "includes
or including without limitation." The word "person" includes individuals,
corporations, partnerships, limited liability companies, co-operatives,
associations and other natural and legal persons. The term "and/or" means
each and all of the persons, words, provisions or items connected by that
term; i.e., it has a joint and several meaning. The word "will" is a
synonym for the word "shall". All attachments to this Agreement are a part
of and are incorporated in this
Agreement.
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10.11
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Counterparts; Facsimile
Delivery. This Agreement may be executed in one or more
counterparts, each of which will be deemed an original and all of which
together will constitute one and the same Agreement. This Agreement may be
delivered by facsimile, and when so delivered will have the same force and
effect as delivery of an original
signature.
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10.12
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Attorneys Fees. In any
legal action or proceeding arising out of or related to this Agreement,
the prevailing party will be entitled to recover all reasonable attorney
fees incurred at trial, on appeal and on any petition for review, together
with other costs allowed by law. For purposes of this Agreement,
"prevailing party" means the party that prevails either affirmatively or
by means of a successful defense with respect to claims having the
greatest value or importance as
reasonably
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determined
by the court with jurisdiction over the matter, after taking into consideration
any settlement offers made by the parties.
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10.13
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ENTIRE AGREEMENT. WITH
RESPECT TO THE SUBJECT MATTER HEREOF, THE LICENSED TECHNOLOGY, THIS
AGREEMENT SUPERCEDES ALL PRIOR DISCUSSIONS, REPRESENTATIONS, WARRANTIES
AND AGREEMENTS, BOTH WRITTEN AND ORAL, AMONG THE
PARTIES, AND CONSTITUTES THE ENTIRE AGREEMENT BETWEEN THE PARTIES WITH
RESPECT TO ITS SUBJECT MATTER, AND THERE ARE NO OTHER UNDERSTANDINGS,
AGREEMENTS OR REPRESENTATIONS, ORAL OR WRITTEN BETWEEN THE
PARTIES.
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OHSU:
OREGON
HEALTH &SCIENCE UNIVERSITY
/s/
Xxxxxxxx X. Xxxxxxx
Xxxxxxxx
X.
Xxxxxxx Date:
March 3, 2008
Director,
Technology and Research Collaborations
LICENSEE:
By: /s/
Xxxxxxx X. Sessions
Signature
of Authorized
Official Date:
February 28, 2008
Printed
Name: Xxxxxxx X. Sessions
Title: Chief
Executive Officer
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Appendix
A: Publications
APPENDIX
A PUBLICATIONS
FASEB J. 2007 Jul;21
(9):2042-9 "Creation of a genetic model of obesity in a teleost"
and
Endocrine 2003
Dec;22(3):257-265 "Agouti-related protein (AGRP) is conserved and regulated by
metabolic state in the zebrafish, Danio rerio"
(both are
attached)
