Exhibit 10.1
LICENSE AGREEMENT
This License Agreement ("Agreement") is made and entered into this 24th of
November, 2007 (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 00000 (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 manufacture, market and distribute to certain
markets, and Accelr8 so agrees, subject to the terms and conditions of this
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 1. DEFINITIONS
As used herein, the following terms shall have the following meanings:
1.01 "Accelr8 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 at Accelr8 and is not publicly known 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 (50%) 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.7.01.
1.07 "Effective Date" means the date specified in the first paragraph of
this Agreement.
1.08 "Hydrogel Coatings" means coatings comprising hydrophilic polymers used
to immobilize molecules and other materials for the purpose of
microarraying.
1.09 "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 by
Accelr8 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), or the OptiChem(R) coating technology.
1.10 "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).
1.11 "Licensed Product" means the product described in Appendix B.
1.12 "Net Sales" means the actual gross selling price of Licensed Products
by Xxxxxx 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.
1.13 "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 divisionals 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
2
(d) any reissues of United States and foreign patents described in
(a), (b) or (c) above.
1.14 "Process Improvements" means any Improvements by Accelr8 to the
processes for the manufacture of the Licensed Product.
1.15 "Stock Product" means a product that has a single, standard set of
specifications (including materials and dimensions), publicly available
at all times to all Xxxxxx customers.
1.16 "Term" means the term of this Agreement, as determined in accordance
with Article 10.
1.17 "Third Party" means any entity or person other than Accelr8 or Xxxxxx.
ARTICLE 2. GRANT OF RIGHTS
2.01 Accelr8 hereby grants, and Xxxxxx accepts, during the Term and subject
to the terms and conditions of this Agreement, a worldwide,
non-transferable (except as provided in ss.12.01), non-exclusive,
royalty-bearing license under the Accelr8 Intellectual Property to
make, use, sell, offer to sell, import and export the Licensed Product.
The foregoing license also permits Xxxxxx 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 Xxxxxx with all information necessary to produce
and market Licensed Products, including descriptions or specifications of
machines, components and materials used for the production.
2.02 The license and rights granted by Accelr8 in ss.2.01 are subject to the
following:
(a) Xxxxxx 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) Xxxxxx acknowledges that the license granted to it hereunder does
not include any Improvements developed during the Term, except
for the Process Improvements.
2.03 Accelr8 hereby reserves all rights in and to the Accelr8 Intellectual
Property not expressly granted to Xxxxxx hereunder.
3
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.
3.02 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. 7.01.
3.03 Accelr8will provide to Xxxxxx, on a time and materials basis as
reasonably requested by Xxxxxx, technical support and consulting
services related to the Licensed Product subject to mutual agreement on
applicable terms and conditions.
3.04 Xxxxxx 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. In addition, Xxxxxx 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. PAYMENTS AND PAYMENT TERMS
4.01 Initial Fee. On the Effective Date, Xxxxxx 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.4.02 ("Prepaid Royalties").
4.02 Royalty Payments. Subject to the other terms and conditions of this
Agreement:
(a) Xxxxxx 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 Term equal or exceed Two
Million Five Hundred Thousand Dollars ($2,500,000), then the
total royalty payable by Xxxxxx under this paragraph (a) for the
Term shall be a flat fee of One Hundred Fifty Thousand Dollars
($150,000).
(b) No royalties shall be payable by Xxxxxx to Accelr8 under this
ss.4.02 until the Prepaid Royalties are exhausted.
4.03 All royalty amounts payable to Accelr8 under this Agreement shall be paid
as provided in ss.4.02 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.5.01.
4.04 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
4
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.
4.05 If laws or regulations require that taxes be withheld from royalty payments
due to Accelr8 hereunder, Xxxxxx 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, Xxxxxx 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 Xxxxxx 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.
4.06 Any amounts not paid by Xxxxxx 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.
4.07 On sales of Licensed Products by Xxxxxx that are made in other than
arm's-length transactions, the value of the Net Sales attributed under this
Article 4 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 5. REPORTS, RECORDS AND AUDITS
5.01 Xxxxxx shall, without request by Accelr8, render to Accelr8 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 5. The written report shall be in the form mutually agreed upon
by the Parties, but will include the information required in ss.3.04.
5.02 Xxxxxx 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
5
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.
5.03 Upon the request of Accelr8, with reasonable written notice, Xxxxxx
shall permit an independent public accountant selected and paid by
Accelr8, 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 Accelr8 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 Xxxxxx 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 6. INTELLECTUAL PROPERTY; PROSECUTION; COSTS AND ENFORCEMENT
6.01 Ownership of Inventions and Information. Ownership of Inventions shall
be determined in accordance with the following rules:
(a) Xxxxxx shall own any Inventions (including all intellectual
property rights therein) that it solely makes or conceives
("Xxxxxx 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.6.01(e).
(e) 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.
6.02 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
6
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.
6.03 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.6.01, 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.
6.04 Infringement by Third Parties. Each Party agrees to inform the other
Party promptly in writing of any suspected infringement of the Accelr8
Patents, 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 7. CONFIDENTIALITY AND PUBLICATIONS
7.01 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 Intellectual Property 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, 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
7
other Party to any employee, agent, consultant, or sublicensee 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 7. 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.
7.02 The obligations of confidentiality and non-use of Confidential
Information set forth in ss.7.01 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.
7.03 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.7.03 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
8
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.
7.04 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.
ARTICLE 8. REPRESENTATIONS, WARRANTIES AND COVENANTS
8.01 ACCELR8 IS LICENSING AND PROVIDING THE ACCELR8 INTELLLECTUAL PROPERTY
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 INTELLLECTUAL PROPERTY OR THE USE, SALE, IMPORT, EXPORT OR
OTHER DISPOSITION BY XXXXXX, ITS AFFILIATES, SUBLICENSEE(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. However Accelr8 has, as of
the Effective Date, no knowledge of any such infringements.
8.02 Accelr8 and Xxxxxx 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
9
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.
8.03 Nothing in this Agreement shall be construed as:
(a) A warranty or representation by Accelr8 to the validity or scope
of any of the Accelr8 Patents;
(b) A warranty or representation that the Accelr8 Intellectual
Property 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.
8.04 Xxxxxx 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.
10
8.05 Except in connection with liability for breach of Article 7 or 8, 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.8.05 shall not be construed to limit any Party's
indemnification obligations under Article 9 or any remedies available
at law for a violation of a Party's intellectual property or
proprietary rights.
ARTICLE 9. INDEMNIFICATION
9.01 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"), due to 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") due to:
(a) any use of the Accelr8 Intellectual Property by Schott in a
manner not expressly permitted under the licenses granted to
Schott hereunder;
(b) any representation or warranty made by Schott in Article 8 of
this Agreement; or
(c) the gross negligence or willful misconduct of Schott; or
(d) 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 Accelr8 and its Affiliates own activities in
connection with the Licensed Products.
9.02 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 Accelr8 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 10. DURATION, TERMINATION AND CONVERSION
10.01 Term. This Agreement shall become effective as of the Effective Date
and shall have a three (3) year term ("Term"), unless earlier
terminated pursuant to ss.10.02.
11
10.02 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.
10.03 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.10.03(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.
10.04 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 5-9 and 11-12, and ss.ss.2.03,
4.03-4.06, and 10.03-10.06 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).
10.05 Exercise of Right to Terminate. If any Party elects to terminate this
Agreement pursuant to the terms of this Article 10, 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 10.
10.06 Damages; Relief. Subject to ss.10.05 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 11. DISPUTE RESOLUTION
11.01 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
12
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 International Chamber of Commerce (ICC)
in accordance with its International Arbitration Rules, as such rules
may be modified by the following provisions of this Article 11.
11.02 Not later than 30 days after commencement of the arbitration, the
Parties shall select one arbitrator from the ICC'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 ICC's rules
not later than 60 days after commencement of the arbitration. The place
of the arbitration shall be Denver, Colorado.
11.03 The arbitration shall be governed by the substantive laws of the State
of New York without regard to conflict of law rules, Title 9 of the US
Code (United States Arbitration Act).
11.04 The arbitration proceedings will be conducted in the English language
and shall not foresee means of "discovery", like e.g. production of
documents.
11.05 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.
11.06 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 12. MISCELLANEOUS
12.01 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.
12.02 Governing Law. This Agreement shall be governed by and construed in
accordance with the laws of the State of New York, excluding its
choice of law principles.
12.03 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
13
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 00000
Facsimile: 0-000-000-0000
Attention: Xxxxxx X. Xxxxxx, Chairman and CEO
CC:
In the case of Schott:
Schott Jenaer Glas GmbH
Xxxx-Xxxxxx-Xxxxxxx 00
00000 Xxxx, Xxxxxxx
Facsimile: 00-0000-000000
Attention: Christian Jabschinsky, 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.12.03.
12.04 Use of Name. Accelr8 grants to Schott the right to use Accelr8's name
in the promotion of the Licensed Product.
12.05 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, and the terms of the
License Agreement between the Parties dated November 24, 2004.
12.06 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.
14
12.07 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.
12.08 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.
12.09 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.
12.10 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.
12.11 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.
12.12 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.
12.13 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]
15
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:
------------------------------
16
APPENDIX A
----------
LIST OF ACCELR8 PATENTS AND PATENT APPLICATIONS
United States Patent 7,067,194
Title: Functional Surface Coating
Issuance Date: June 27, 0000
Xxxxxx Xxxxxx Patent 6,844,028
Title: Functional Surface Coating
Issuance Date: January 18, 0000
Xxxxxx Xxxxxx Patent Application 200500100675 A1
Title: Functional Surface Coating
Publication Date: May 12, 2005
International Application Published Under the Patent Cooperation Treaty (PCT)
Title: Functional Surface Coating
Publication Number: WO/2003/000433 A1
Publication Date: January 3, 2003
Application Number: PCT/US02/20408
And any national application or patent issued or derived from
PCT/US02/20408, including but not limited to EP 1409155, CA 2455393 and
JP0000000000.
International Application Published Under the Patent Cooperation Treaty (PCT)
Title: Hydroxyl Functional Surface Coating
Publication Number: WO/2005/069889 A1
Publication Date: August 4, 2005
Application Number: PCT/US2005/001373
And any national application or patent issued or derived from
PCT/US2005/001373.
APPENDIX B
----------
SPECIFICATIONS FOR THE LICENSED PRODUCT
The Licensed Product consists of:
a glass microscope slide with the approximate dimensions 25 mm x 76 mm
x 1 mm with an applied coating;
said coating comprising an activated polymer formulation providing
N-hydroxy succinimide (NHS) functional groups;
said formulation comprising of:
an active component comprising an NHS-activated polyethylene
glycol polymer;
a matrix forming component comprising polyoxyethylene sorbitan
tetraoleate;
and a crosslinking component comprising an azidosilane molecule.
