LANL Control Number 00-00-00000
EXCLUSIVE PATENT LICENSE AGREEMENT
BETWEEN
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
AND
TRADE PARTNERS INTERNATIONAL INCORPORATED
EXCLUSIVE PATENT LICENSE AGREEMENT
Trade Partners International Incorporated
THIS LICENSE AGREEMENT is entered into by and between THE REGENTS OF THE
UNIVERSITY OF CALIFORNIA, a nonprofit educational institution and a public
corporation of the State of California, hereinafter referred to as the
"University;" and TRADE PARTNERS INTERNATIONAL INCORPORATED, 0000 Xxx Xxxxxxx
XX, Xxxxxxxxxxx, Xxx Xxxxxx 00000, hereinafter referred to as the "Licensee,"
the partiesto this License Agreement being referred to individually as a
"Party," and collectively as "Parties."
BACKGROUND
The University conducts research and development at the Los Alamos
National Laboratory (LANL) for the U.S. Government under Contract No.
W-7405-ENG-36 with the U.S. Department of Energy (DOE).
Rights in inventions and technical data made in the course of the
University's research and development at LANL are governed by the terms and
conditions of the Contract.
Certain Technology relating to a magnetic Gripper device for climbing
vertical ferromagnetic surfaces has been developed in the course of the
University's research and development at LANL.
The University desires that such Technology be developed and utilized to
the fullest extent possible so as to enhance the accrual of economic and
technological benefits to the U.S. domestic economy, and is therefore willing
to grant an exclusive license to Licensee for that part of the Technology to
which the University has title.
The Licensee desires to obtain from the University certain exclusive
rights for the commercial development, manufacture, use, and sale of the
Technology.
NOW, THEREFORE, the Parties agree as follows:
1. DEFINITIONS
1.1 "Technology", means technical information, know-how and data
owned or controlled by the University and relating to a magnetic gripper
device as applied in U.S. Patent Application Serial Number 07/870,965 (filed
April 20, 1992) and as disclosed in U.S. Patent 5,192,155.
1.2 "Patent Rights" means the University's rights arising from U.S.
Patent Application Serial Number 07/870,965, filed April 20, 1992, Magnetic
Gripper Device, by Xxxx Xxxxx and Xxxxxx Xxxxx, now U.S. Patent 5,192,155,
issued March 9, 1993, including any continuing-applications thereof including
divisions and reissues (but not including continuations-in-part); any patents
issuing on the applications or continuing
Los Alamos National Laboratory 1 of 16
applications; and any corresponding foreign patents or patent applications.
1.3 "Licensed Method" means any method, procedure or process covered
by any subsisting claim of any patent or patent application identified in
paragraph 1.2.
1.4 "Licensed Product" means any article of manufacture, machine or
composition of matter covered by any subsisting claim of any patent or patent
application identified in paragraph 1.2, and any article of manufacture,
machine or composition of matter produced through the practice of a Licensed
Method.
1.5 "Licensed Invention" means any Licensed Product or Licensed
Method.
1.6 "Net Income" means the gross revenue from sales of Licensed
Products or from the sales of services using a Licensed Method by Licensee and
sublicensees, less the following deductions where applicable: (a) sales
returns; (b) allowances; (c) trade discounts, (d) transportation charges; (e)
sales and excise taxes, and; (f) duties and tariffs.
2. GRANT
2.1 The University grants to the Licensee an exclusive license to make,
use, and sell Licensed Products and to practice Licensed Methods under the
Patent Rights, with the right to sublicense others under Article 3, in all
fields-of-use and in all markets.
2.2 The University expressly reserves the right to use the Technology,
including the right to make and use Licensed Products and to practice Licensed
Methods, for noncommercial educational and research purposes.
2.3 The U.S. Government has a nonexclusive, nontransferable,
irrevocable, paid-up license to practice or have practiced throughout the
world, for or on behalf of the United States, inventions covered by the
University's Patent Rights, and has certain other rights under 35 USC 200-212
and applicable implementing regulations and under the U.S. Department of
Energy Assignment and Confirmatory License, if any, attached as Appendix A to
this Agreement.
2.4 Under 35 U.S.C. 203 the U.S. Department of Energy has the right
to require the Licensee to grant a nonexclusive, partially exclusive or
exclusive license under the Patent Rights in any field of use to a responsible
applicant or applicants, 48 CFR 27.304-1(g).
2.5 The Licensee will make available to the University and will grant
an irrevocable, paid-up, royalty-free nonexclusive license to the University
to make and use for noncommercial purposes any developments to the Technology
made by Licensee.
3. SUBLICENSES
3.1 The University grants to Licensee the right to grant sublicenses
to third parties to make, have made, use and sell Licensed Products and to
practice Licensed
Los Alamos National Laboratory 2 of 16
Methods in which the Licensee has current exclusive rights-under this License.
But sublicenses may be granted only under the following conditions:
(a) Licensed Products sold in the United States will be substantially
manufactured in the United States; or
(b) (i) the sublicensee has a business unit located in the United States
and significant economic and technical benefits will flow to the U.S. as a
result of the sublicense agreement; and,
(ii) in sublicensing any entity subject to the control of a
foreign company or government, such foreign government permits U. S. agencies,
organizations, or other persons to enter into cooperative R&D agreements and
licensing agreements, and has policies to protect U.S. intellectual property
rights.
If Licensee determines that neither conditions (a) nor (b) can be met,
Licensee must obtain the written approval of the University prior to granting
a sublicense.
(c) Sublicenses granted under this clause must contain all of the
conditions, restrictions and reservations of this Agreement, except for those
provisions related to the License Fee and annual minimum royalties, and shall
preserve the rights and reservations of the University and the U.S. Government
existing under this License Agreement.
3.2 Licensee shall provide the University with a copy of each
sublicense entered into with a third party within 30 days after execution.
3.3. Licensee must pay to the University the earned royalties prescribed
in Paragraph 5.1 on all Net Income of Licensee's sublicensees. With respect to
any sublicense, this obligation continues for so long as a sublicense granted
by Licensee is in effect, and is an obligation of the Licensee whether or not
royalty payments are actually received by Licensee from its sublicensee.
3.4 Termination of this Agreement automatically operates as an
assignment by Licensee to the University of all Licensee's right, title and
interest in and to each sublicense granted by Licensee.
If this Agreement terminates, any sublicensee, who is not in default of the
terms and conditions of its sublicense agreement with Licensee may make a
written election to continue such sublicense agreement as a license agreement
with the University.
4. LICENSE FEE
4.1 Licensee must pay to the University a one-time, nonrefundable
License Fee of ten-thousand U.S. dollars ($10,000.00) payable in five
installments of two thousand U.S. dollars ($2,000.00) as follows:
a. Licensee must pay to the University the first installment of the
License Fee, in the amount of two-thousand U.S. dollars ($2,000.00), within
one (1) calendar month after the last day of the month when the parties
executed this Agreement, and;
Los Alamos National Laboratory 3 of 16
b. Licensee's second installment of the License Fee, in the amount of
two-thousand U.S. dollars ($2,000.00), occurs on the day December 31 of the
first calendar year after the calendar year when the parties executed this
Agreement and must be paid within one calendar month from such day, and;
c. Licensee's third installment of the License Fee, in the amount of
two-thousand U.S. dollars ($2,000.00), occurs on the day June 30 of the second
calendar year after the calendar year when the parties executed this Agreement
and must be paid within one calendar month from such day, and;
d. Licensee's fourth installment of the License Fee, in the amount of
two-thousand U.S. dollars ($2,000.00), occurs on the day December 31 of the
second calendar year after the calendar year when the parties executed this
Agreement and must be paid within one calendar month from such day, and;
e. Licensee's fifth and last installment of the License Fee, in the
amount of two-thousand U.S. dollars ($2,000.00), occurs on the day June 30 of
the third calendar year after the calendar year when the parties executed this
Agreement and must be paid within one calendar month from such day.
5. EARNED ROYALTIES
5.1 The Licensee will pay to the University an earned royalty of
eight percent (8.0%) on Net Income received during the term of this License
Agreement.
5.2 Notwithstanding Paragraph 5.1 above, Licensee has no obligation
to pay earned royalty on any sale of any Licensed Invention to the U.S.
Government or any agency thereof or any U.S. Government contractor who
certifies that its purchase of the Licensed Invention is for or on behalf of
the U.S. Government. Licensee will not impose royalty charges in sales of
Licensed Inventions to U.S. Government entities, and will refund to them any
royalty collected on such sales.
5.3 The first earned royalty payment due under this Agreement is
based on Net Income received by Licensee from the effective date of this
Agreement through December 31 of the same calendar year, and must be paid
within one month from the end of such period. Subsequent earned royalty
payments shall be calculated based on Net Income received by Licensee during
the semiannual periods extending from January 1 through June 30 and from July
1 through December 31 of each year, for as long as this Agreement remains in
effect. Royalty payments must be paid within one month from the end of the
respective semiannual period.
5.4 If any patent claim included within the University's Patent
Rights is held invalid by a decision of a court of competent jurisdiction in
any country and from which no appeal has or can be taken, the obligation to
pay earned royalties on sales in that country of products or methods covered
by the invalidated claim and not covered by valid patent claims subsisting
under the University's Patent Rights will be reduced as of the date of such
decision to fifty percent (50.0%) of the royalty rate set forth in Paragraph
5.1, and must be paid on the sale of such products or methods for a further
period of three (3) years or until the expiration date of the patent
containing the invalidated claim, whichever is sooner, in consideration of the
University having
Los Alamos National Laboratory 4 of 16
provided valuable know-how and technical assistance to the Licensee in
entering the market in a timely manner.
Licensee must still pay any earned royalties that have accrued before the
decision of the Court.
5.5 All payments due the University must be paid in United States
funds to the University of California, Los Alamos National Laboratory, at the
address set forth in Paragraph 20.1. Licensee must convert Net Income received
in foreign currencies into equivalent United States funds at the exchange rate
for the foreign currency prevailing as of the last day of the reporting
period, as reported in the Wall Street Journal.
5.6 If the University reduces the exclusive license granted under
Article 2 to a nonexclusive license pursuant to Paragraph 10.2, Licensee will
pay to the University fifty percent (50.0%) of the earned royalties of
Paragraph 5.1 on Net Income received after the effective date of the reduction
to a nonexclusive license.
6. ANNUAL MAINTENANCE FEE
6.1 Licensee's first maintenance fee occurs on the day December 31 of
the first calendar year after the calendar year when the parties executed this
Agreement and must be paid within one calendar month from such day; and
Licensee's subsequent maintenance fees occur on the day December 31 of each
calendar year thereafter and must be paid within one calendar month from such
day. The amount of Licensee's maintenance fees are:
a. Six-thousand U.S. dollars ($6,000.00) for the first maintenance
fee, and;
b. twelve-thousand U.S. dollars ($12,000.00) for the second
maintenance fee, and;
c. twenty-four-thousand U.S. dollars ($24,000.00) for the third
and subsequent maintenance fees.
6.2 The University will credit Royalty payments made to the
University, in the same calendar year that the maintenance fee occurs, against
such maintenance fee and the Licensee must pay the remaining maintenance fee
balance.
6.3 Licensee fulfills its maintenance fee requirement for a calendar
year if Licensee's Royalty payments made to the University for such calendar
year exceed the maintenance fee for such calendar year.
7. SEMIANNUAL REPORTS
7.1 Progress Reports. Licensee must submit semiannual progress
reports certified by an officer of the Licensee. The reports are due by
February 1 and August 1 of each year, except that the first report is due on
August 1 following the effective date of this Agreement. This report covers
the Licensee's activities related to the development of the Technology and the
securing of approvals necessary for commercialization of the Technology. The
reports must be made until earned royalties
Los Alamos National Laboratory 5 of 16
payable to the University exceed the annual minimum royalty stated in
Paragraph 6.1. The reports must conform with the Report Format set forth in
Appendix B hereof. Reports marked by Licensee as proprietary financial or
business information of Licensee will be treated by the University as
proprietary information.
7.2 Financial Reports. Licensee must submit semiannual financial
reports. The reports are due on the dates that payments of earned or annual
minimum royalties are due under Articles 5 and 6, and must be submitted
regardless of whether any payment is actually made. The reports must be
certified by an officer of the Licensee, must cover the period for which
royalty payments are calculated, and must show total sales or commercial uses
made of Licensed Products or Licensed Methods by Licensee and any sublicensed
during the reporting period. If no sale, sublicense, or use of Licensed
Products or Licensed Methods has been made during a reporting period, a
statement to this effect must be made. Reports marked by Licensee as
proprietary financial or business information of the Licensee will be treated
as such by the University.
8. BOOKS AND RECORDS
8.1 The Licensee must keep books and records according to generally
accepted accounting procedures, accurately showing all sales of Licensed
Products or practice of the Licensed Method by Licensee or sublicensees under
the terms of this License Agreement. Such books and records must be open to
inspection and audit on a proprietary basis by representatives or agents of
the University at reasonable times, but in no event more than once for each
calendar year, for the purpose of verifying the accuracy of the semiannual
reports and the royalties due. Licensee may request that any such inspection
and audit be conducted by an independent auditor, in which event, Licensee
will pay the reasonable costs of such auditor.
8.2 The fees and expenses of the representatives performing the
inspection and audit will be borne by the University. However, if an error in
royalties owed the University of more than Ten Thousand dollars ($10,000.00)
is discovered by the representatives of the University, then Licensee must pay
the fees and expenses of these representatives.
8.3 The books and records required by Paragraph 8.1 must be preserved
for at least three (3) years from the date of the royalty payment to which
they pertain.
9. TERM OF THE AGREEMENT
9.1 This License Agreement is effective as of the later of the dates
of execution by the Parties.
9.2 This License Agreement is in full force and effect from the
effective date and remains in effect until the expiration of the last to
expire of the patents included within the University's Patent Rights, unless
sooner terminated by operation of law or by acts of the Parties in accordance
with the terms of this License Agreement.
Los Alamos National Laboratory 6 of 16
10. TERMINATION OR MODIFICATION BY THE UNIVERSITY
10.1 If the Licensee fails to deliver to the University any report when
due, or fails to pay any royalty or fee when due, or if the Licensee breaches
any material term of this License Agreement, the University may give written
notice of default to the Licensee. If the Licensee fails to cure the default
within ninety (90) days from the date of delivery of notice to Licensee, the
University has the right to terminate this License Agreement. This License
Agreement will terminate upon delivery of written notice of termination to the
Licensee. Termination does not relieve the Licensee of its obligation to pay
any royalty or license fees due or owing at the time of termination and does
not impair any accrued right of the University.
10.2 If Licensee fails to make any annual maintenance fee payment
identified in Paragraph 6.1 for any year, the University may terminate this
License Agreement, or, at the University's sole option, reduce the Licensee's
exclusive license to a nonexclusive license under the terms of Paragraph 5.6.
The University will not exercise this option if Licensee demonstrates to the
University's satisfaction that Licensee is fully exploiting the market for the
Licensed Invention.
11. TERMINATION BY THE LICENSEE
11.1 The Licensee may terminate this License Agreement by giving
written notice to the University. Such termination will be effective ninety
(90) days from the date of delivery of the notice, and all the Licensee's
rights under this Agreement will cease as of that date.
11.2 Any termination pursuant to the above paragraph does not relieve
the Licensee of any obligation or liability accrued by Licensee prior to the
effective date of termination.
12. PATENT PROSECUTION AND MAINTENANCE
12.1 The University will diligently prosecute any U.S. patent
applications identified in Article 1.2, and will maintain any U.S. patents
identified in Article 1.2, using counsel of its choice. The University will
provide the Licensee, on request, with copies of relevant documentation
relating to any such patent prosecution. The Licensee will hold such
documentation in confidence.
12.2 The University will use its best efforts to amend any patent
application to include claims reasonably requested by the Licensee and
required to protect the Licensed Invention.
12.3 The Licensee may request that the University obtain patent
protection corresponding to the Patent Rights in foreign countries in which
the University has not already sought patent protection as of the effective
date of this Agreement. The Licensee must submit any such request to the
University within ten months of the filing date of a U.S. or PCT application
identified in paragraph 1.2. The University may, at its discretion, seek such
foreign patent protection in the name of the University, using counsel of the
University's choice. If the University declines to seek foreign patent
protection requested by the Licensee, the University may, at its discretion,
authorize
Los Alamos National Laboratory 7 of 16
the Licensee to seek the requested foreign patent protection in the name of
the University and to use counsel of the Licensee's choice, which
authorization shall not be unreasonably withheld.
The failure of the Licensee to request that the University seek foreign patent
protection will be considered an election by the Licensee not to secure such
foreign patent protection.
12.4 The preparation, filing and prosecuting of all foreign patent
applications filed at the Licensee's request, as well as the maintenance of
all resulting patents, will be at the sole expense of the Licensee, whether
conducted by counsel selected by the University or by the Licensee. Expenses
incurred for patent protection in a particular country may be credited against
royalty payments which would otherwise be due for Net Income derived from that
foreign country.
12.5 The University will bear the costs incurred up to the effective
date of this Agreement for any foreign patent applications or patents,
including international (PCT) applications, identified in 1.2 above. Costs
associated with the foreign applications or patents after the effective date
of this Agreement will be borne by the Licensee and will be reimbursed to the
University within thirty days of invoicing.
12.6 The Licensee's obligation to pay for costs of foreign patents and
patent applications under 12.3, 12.4 and 12.5 continues as long as this
Agreement remains in effect. Licensee may terminate its obligations with
respect to any foreign patent application or patent by giving 90 days' written
notice to the University. The University will use its best efforts to curtail
foreign patent costs upon receipt of notice from the Licensee. The University
may at its election continue prosecution or maintenance of such applications
or patents at the University's expense. But Licensee shall have no further
right or license thereunder.
12.7 The University has the right to seek patent protection, at its
own expense, in any country for which a patent application has not been filed
as of the effective date of this Agreement, and for which the Licensee has not
requested foreign patent protection. Any applications and resultant patents
are not covered by this License Agreement. But Licensee shall have a first
option to negotiate a license agreement in such countries with the University
under mutually agreeable terms.
13. USE OF NAMES, TRADENAMES, AND TRADEMARKS
13.1 Nothing contained in this License confers any right to use in
advertising, publicity, or other promotional activities any name, tradename,
trademark, or other designation of either Party hereto (including any
contraction, abbreviation, or simulation of any of the foregoing). Unless
required by law, the use of the name "the University of California" or the
name of any facility or campus of the University of California is expressly
prohibited.
13.2 The University may disclose to third parties the existence of this
License Agreement and the extent of the grant in Article 2, but must not
disclose information identified as proprietary by Licensee under 13.4, except
where the University is required to release such information under either the
California Public Records Act or other applicable law. A decision to release
information under applicable law will be at
Los Alamos National Laboratory 8 of 16
the sole discretion of the University.
13.3 Licensee may disclose to third parties the existence of this License
Agreement and the terms and conditions to the extent determined appropriate by
Licensee.
13.4 Licensee will xxxx those portions of a copy of this License
Agreement which Licensee believes contain proprietary business information of
Licensee and return such copy to the University within thirty days of the
effective date of this License Agreement.
14. WARRANTY BY THE UNIVERSITY
14.1 The University warrants that it has the lawful right to grant this
license, subject to DOE assignment of rights in the Technology to the
University in the event such rights are not owned by the University, and that
it has not granted any rights under the University's Patent Rights to any
other party that diminish any right granted to Licensee, except as required by
action of law or by the University's prime contract with DOE.
14.2 This license is provided WITHOUT warranty of merchantability or
fitness for a particular purpose or any other warranty, express or implied.
The University makes no representation or warranty that the Licensed Products
or Licensed Methods will not infringe any patent or other proprietary right.
14.3 IN NO EVENT WILL THE UNIVERSITY BE LIABLE FOR ANY INCIDENTAL,
SPECIAL, OR CONSEQUENTIAL DAMAGES RESULTING FROM EXERCISE OF THIS LICENSE OR
THE USE OF LICENSED PRODUCTS OR LICENSED METHODS.
14.4 Nothing in this License Agreement shall be construed as:
a. a warranty or representation by the University as to the
validity or scope of University's Patent Rights;
b. an obligation to bring or prosecute actions or suits against
third parties for patent infringement, except as provided in Article 15
(Infringement);
c. conferring by implication, estoppel, or otherwise any license or
rights under any patents of the University other than University's Patent
Rights, copyrights, or other intellectual property of the University; or
d. an obligation by University to furnish any know-how, technical
assistance, or technical data [that is unrelated or unnecessary to the
transfer of the Technology to the Licensee for the purpose of implementing
this License Agreement]*.
15. INFRINGEMENT
15.1 In the event that either Party to this License Agreement learns of
the infringement of any of University's Patent Rights, that Party will inform
the other Party in writing and will provide the other Party with available
evidence of the infringement.
Los Alamos National Laboratory 9 of 16
15.2 Both Parties will use their best efforts in cooperating with each
other to terminate the infringement without litigation.
15.3 If the efforts of the Parties are not successful in abating the
infringement within ninety (90) days after the infringer has been formally
notified of infringement by the University, the University has the right to:
15.3a commence suit on its own account;
15.3b join the Licensee in a suit; or
15.3c refuse to participate in a suit,
and the University shall give notice in writing to the Licensee within ten
(10) working days after the 90 day period of its election. The Licensee may
bring suit for patent infringement only if the University elects not to
commence or join in any suit other than as nominal party plaintiff and if the
infringement occurred during the period and in a country where the Licensee
had exclusive rights under this License Agreement.
15.4 Any legal action under this article will be at the expense of the
Party on account of whom suit is brought. If legal action is brought by
Licensee, the University will be entitled to 25% of any damage recovery based
on lost profits of Licensee. Legal action brought jointly by the University
and the Licensee and fully participated in by both will be at the joint
expense of the Parties and all recoveries will be shared jointly by them in
proportion to the share of expenses paid by each.
15.4 Each Party will cooperate with the other in proceedings
instituted hereunder, provided expenses are borne by the Party bringing suit.
Litigation will be controlled by the Party bringing suit, except that the
University will control the litigation if brought jointly. The University may
be represented by its choice of counsel in any suit brought by the Licensee.
15.6 Neither Party will settle or compromise any suit without the other
Party's consent.
16. WAIVER
16.1 No waiver by either Party of any breach or default of any of the
covenants or agreements of this Agreement is a waiver as to any subsequent or
similar breach or default.
17. ASSIGNABILITY
17.1 This License Agreement may be assigned by the University, but
shall be personal to Licensee and assignable by Licensee only with the written
consent of the University.
17.2 In the event that a controlling interest in Licensee is obtained
by a
Los Alamos National Laboratory 10 of 16
different entity, the University may terminate this License Agreement at its
discretion, which discretion shall not be exercised unreasonably. Licensee
will notify the University of any such change in controlling interest within
thirty days of its occurrence.
18. INDEMNITY - PRODUCT LIABILITY
18.1 The Licensee will indemnify the U.S. Government and the
University, and their officers, employees, and agents, against any damages,
costs and expenses, including attorneys' fees, arising from the
commercialization and utilization of the Technology by Licensee, including but
not limited to the making, using, selling or exporting of products, processes,
or services derived therefrom. This indemnification will include, but will not
be limited to, any product liability.
19. LATE PAYMENTS
19.1 In the event royalty payments or fees are not received by the
University within thirty (30) days of when due, the Licensee will pay to the
University interest charges at the rate of ten percent (10%) per annum on the
amount of the royalty payments or fees overdue.
20. NOTICES
20.1 Any payment, notice, or other communication required or permitted
to be given to either party hereto is properly given and effective on the date
of delivery if delivered in person or by first-class certified mail, postage
paid, or by facsimile transmission with confirmation, to the respective
address or facsimile number given below, or to any other address designated by
written notice to the other party as follows:
In the case of the Licensee:
Trade Partners International
0000 Xxx Xxxxxxx XX
Xxxxxxxxxxx, Xxx Xxxxxx 00000
Attn.: Dr. Xxxxxx Xxxxxx
FAX Number (000) 000-0000
In the case of the University:
Los Alamos National Laboratory
Industrial Partnership Office
P.O. Box 1663, Mail Stop K571
Xxx Xxxxxx, Xxx Xxxxxx 00000
Licensing Administrator
FAX Number (000) 000-0000
Los Alamos National Laboratory 11 of 16
21. FORCE MAJEURE
21.1 Neither party is responsible for delay or failure in performance
of any of the obligations imposed by this License Agreement, if the failure is
caused by fire, flood, explosion, lightning, windstorm, earthquake, subsidence
of soil, court order or government interference, civil commotion, riot, war,
or by any cause of like or unlike nature beyond the control and without fault
or negligence of a party.
22. EXPORT CONTROL LAWS
22.1 Licensee acknowledges and understands that the export of certain
goods or technical data from the United States requires an export control
license from the United States Government, and that failure to obtain an
export control license may result in violation of U.S. laws.
23. PREFERENCE FOR UNITED STATES INDUSTRY
23.1 Any products embodying Licensed Products or produced through the
use of a Licensed Method will be manufactured substantially in the United
States.
24. DISPUTE RESOLUTION
24.1 The Parties will use their best efforts to resolve disputes
arising from this Agreement. Any dispute that cannot be resolved by the
Parties will be resolved by non-binding arbitration in accordance with the
rules and procedures of the American Arbitration Association, acting in the
state of New Mexico, and shall be enforceable in accordance with New Mexico
law.
25. CONFLICT OF INTEREST
25.1 Licensee represents that Licensee does not now employ and has
made no offers of employment to members of the University Negotiating Team set
out in Appendix C. Licensee agrees to make no offers of employment to any
member of the University Negotiating Team for a period of two years after the
effective date of this Agreement without the express written permission of the
University. Licensee understands that this clause is a material undertaking by
Licensee without which the University would not enter into this Agreement. The
University has the option to terminate this Agreement for breach of this
clause by Licensee.
26. MISCELLANEOUS
26.1 The headings of the several sections of this Agreement are
included for convenience of reference only and are not intended to be a part
of or to affect the meaning or interpretation of this License Agreement.
26.2 No amendment or modification of this Agreement is binding on
the Parties unless made in a writing executed by duly authorized
representatives of the
Los Alamos National Laboratory 12 of 16
Parties.
26.3 This License Agreement embodies the entire understanding of the
Parties and supersedes all previous communications, representations, or
understandings, either oral or written, between the Parties relating to this
License Agreement.
26.4 In the event any one or more of the provisions of this License
Agreement is held to be invalid, illegal, or unenforceable in any respect, the
invalidity, illegality, or unenforceability will not affect any other
provisions hereof, and this License Agreement will be construed as if such
invalid or illegal or unenforceable provisions had never been part of this
License Agreement.
26.5 This License Agreement will be interpreted and construed in
accordance with the laws of the New Mexico.
IN WITNESS WHEREOF, both the University and the Licensee have executed
this License Agreement, in duplicate originals, by their respective officers
on the day and year hereinafter written.
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
By /s/ X.X. Xxxxxx
-------------------
Xxxxxxxxx X. Xxxxxx, Director
Los Alamos National Laboratory
Date: 5/19/95
LICENSEE
By: /s/ Xxxxxx X. Xxxxxx
---------------------------
Xxxxxx E, Xxxxxx, President
Trade Partners International, Incorporated
Date: 5/23/95
Los Alamos National Laboratory 12 of 16
APPENDIX A
ASSIGNMENT AND CONFIRMATORY LICENSE
APPENDIX B
REPORT FORMAT
1. DEVELOPMENT:
-Progress towards commercialization
-Problems encountered
-Precommercialization marketing efforts
-Any shift in time-line from original business plan
-Expected launch date
-Any improvements, new patents, derivative works, etc. arising from
the work
2. COMMERCIALIZATION:
-First launch date in US
-Sales, production or other royalty-generating activity
-Royalty calculations and royalties due
3. CONTINUING:
-Continued efforts in evolving the product/service
-Improvements
-Sublicenses
-Foreign registrations, licenses, commercializations, etc.
-Any problems which would potentially effect the contract
-Any infringements of intellectual property (as provided in the
contract)
-Any potential litigation involving the licensed intellectual
property
4. OF GENERAL INTEREST:
-Promotional material, news releases, etc.
-Company annual reports
-Testing activity, scientific publications
-Any feedback, positive or negative
-Suggestions
Los Alamos National Laboratory 15 of 16
APPENDIX C
DESIGNATION OF LICENSING TEAM
"Licensing Team" means the Negotiating Team and the Technical Advisors
"Negotiating Team" means personnel responsible for evaluating the Licensee's
entire business plan and having sole responsibility for negotiating with the
Licensee on all terms and conditions (including terms for royalties and fees
and all other financial terms) of this License Agreements, for deciding to
grant this license, for drafting this License Agreement, and for obtaining
legal approval and the Director's signature. The Negotiating Team is not
bound, in any way, by the technical opinions of the Technical Advisors.
Negotiating Team:
Xxxxxx Xxxxxx, Licensing Executive, Industrial Partnership Office, MS C334
Xxx Xxxxxx, Patent Attorney, Business & Patent Law, MS D412
"Technical Advisors" means personnel responsible for evaluating only the
technical portion of Licencee's business plan and, based on their relevant
technical expertise and opinions, for advising the Negotiating Team on whether
the Licensee has the technical resources to commercialize the University's
Patent Rights.
Technical Advisors
Xxxxxx Xxxxx, Group Leader, AOT-1 Ms H808
Xxxx Xxxxx, Laboratory Associate, XXX-0, XX X000
Xxx Xxxxxx National Laboratory 16 of 16
