Exhibit 10.5
AGREEMENT
THIS AGREEMENT is made and is effective this January __,1998, by and between
UTEK CORPORATION, having offices located at 0000 Xxxx Xxxxx, Xxxxx Xxxx, Xxxxxxx
00000 ("UTEK"), the University of South Florida, acting for and on behalf of the
Board of Regents, a public corporation of the State of Florida having offices at
0000 Xxxx Xxxxxx Xxxxxx, Xxxxx, XX 00000 ("USF") and USF Research Foundation,
lnc. a University direct-support organization under Florida law and a
not-for-profit corporation of the State of Florida, having offices located at
0000 Xxxx Xxxxxx Xxx, XXX 000, Xxxxx, XX 00000 ("USFRF").
WITNESSETH
WHEREAS, USF is the owner of intellectual property and technology ("Technology")
and, through its Division of Patents & Licensing in the USF Office of Research
("OoR") seeks to have such Technology brought to the marketplace, one goal of
which is to generate on-going royalties to enhance USF's research capabilities
and reward faculty whose patents are licensed.
WHEREAS, USFRF has been retained by USF to assist USF in meeting its foregoing
goal, and to provide other Technology-related and financial management
activities.
WHEREAS, UTEK seeks to bring university-based technology to public companies
that can rapidly bring new products to the marketplace.
NOW, THEREFORE, in consideration of the premises and mutual convenants herein
contained, the parties agree as follows:
Article 1 - Technology Option
1.1 Evaluation: From time to time OoR may request UTEK to review selected
Technology and to evaluate the potential of such selected Technology
for successful commercialization. After such evaluation, if UTEK and
OoR agree to have UTEK seek a licensee for or otherwise merchandise a
specific Technology, the parties will execute a copy of the option
agreement attached hereto as Exhibit A ("Option Agreement"), that
will specifically identify the appropriate Technology, field of use
and such other term descriptions as may be appropriate, to provide
UTEK an exclusive, royalty-free right for a specified period to seek
a licensee or other commercial opportunity for the Technology. OoR
will seek to obtain patent protection, if appropriate in the opinion
of OoR, for such optioned Technology.
1.2 License: UTEK will then use its best efforts to find a corporate
licensee or otherwise commercialize the Technology at terms
acceptable to OoR. If UTEK finds a OoR-acceptable licensee, OoR shall
negotiate toward an agreement with such licensee to commercialize the
Technology and, if successful, royalties for the Technology will be
paid directly by the licensee to USFRF. USF is without obligation to
UTEK in connection with the foregoing negotiations and license, and
the parties do not intend for UTEK to share in such royalties or
otherwise be compensated by USF or USFRF for its activities and the
opportunities to review and evaluate Technology. If UTEK is unable to
find a OoR-acceptable licensee or corporate partner for the
Technology by the end of the specified period, the option shall
expire unless extended by mutual agreement of the parties, and all
rights to the Technology shall revert back to USF.
Article 2 - Term and Termination
2.1 The term of this Agreement is for a period of three (3) years,
commencing on the date above.
2.2 Either party may terminate this Agreement at any time with sixty (60)
days written notice.
Article 3 - Confidential Information
3.1 During the term of this Agreement, neither party shall disclose to
anyone any confidential information ("Confidential Information") of
the other party. Confidential Information for the purposes of this
Agreement shall include proprietary and confidential information such
as, but not limited to, technology plans, research and development
plans, designs, models, software, product specifications, marketing
plans, patent applications, disclosures and new concepts.
Confidential Information shall not include any information that;
a) Is disclosed by one party ("Owner") to the other ("Recipient")
without restriction.
b) Becomes publicly available through no act of the Recipient.
c) Is rightfully received by either party from a third party having no
obligation to Owner.
d) Is disseminated in publications
3.2.1 UTEK may disclose USF Confidential Information to its customers if
necessary for such customers to determine their interest in licensing
a specific Technology, provided that UTEK will first cause such
customer to execute a USF approved confidentiality and non-disclosure
agreement. A copy of this signed agreement will be provided to USF.
Article 4 - Notices
Any notice given pursuant to this Agreement shall be in writing and shall be
hand delivered; mailed by certified mail, return receipt requested; or sent by
overnight courier service as follows:
UTEK Corporation University of South Florida USF Research Foundation, Inc.
0000 Xxxx Xxxxx 0000 Xxxx Xxxxxx Xxx., XXX 00 XXX Box 30445
Plant City, Florida Xxxxx, XX 00000 Xxxxx, XX 00000-0000
Article 5 - Understandings and Amendments
This Agreement constitutes the final understanding and agreement between the
parties with respect to the subject matter hereof and supersedes all prior
negotiations, understandings and agreements between the parties, whether written
or oral. This Agreement may be amended, supplemented or changed only by an
agreement in writing, signed by both of the parties. If any term of this
Agreement is held by a court of competent jurisdiction to be invalid or
unenforceable, then this Agreement, including all of the remaining terms, will
remain in full force and effect as if such invalid or unenforceable term had
never been included.
Article 6 - Governing Law
This Agreement shall be governed by and be construed in accordance with the laws
of the state of Florida.
IN WITNESS WHEREOF, this Agreement has been executed by the Parties as of the
date first above written.
UTEK CORPORATION
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By: Xxxxxxxx X. Xxxxx, Ph.D., CEO
University of South Florida USF Research Foundation, Inc.
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By:
