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Exclusive Patent License Agreement
Exclusive Patent License Agreement (59K)
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EXCLUSIVE PATENT LICENSE AGREEMENT
The Parties to this License Agreement (hereinafter "Agreement"),
UT-Battelle, LLC (hereinafter "UT-Battelle"), a limited liability company
organized and existing under the laws of the State of Tennessee and having an
address for notices at Post Office Box 2008, Oak Ridge, Tennessee 37831-6196,
and Sense Holdings, Inc. (hereinafter "Sense"), a corporation organized and
existing under the laws of the State of Florida and having an address for
notices at 4503 NW 103 Avenue Suite 200, . . .
2809327
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Sense Holdings
As referenced in this Exclusive Patent License Agreement:
Sense Holdings, Inc. – liability company
organized and existing under the laws of the State of Tennessee and having an
address for notices at Post Office Box 2008, Oak Ridge, Tennessee 37831-6196,
and Sense Holdings, Inc. (hereinafter "Sense"), a corporation organized and
existing under the laws of the State of Florida and having an address for
notices at 4503 NW 103 Avenue Suite 200, Sunrise,
_____________
Sense Holdings, Inc) – requires a license to Proprietary
Rights;
F. Sense wishes to acquire the right to practice the Proprietary Rights;
G. UT-Battelle and Microsensor Technologies, Inc (a wholly owned
subsidiary of Sense Holdings, Inc) entered into a patent license
agreement with an effective date of March 26, 2001 (twice amended) for
Group I of the Proprietary Rights listed in Exhibit A attached hereto;
_____________
Sense Holdings, Inc. – 865) 576-9465
Post Office Box 2008 Verify No.
Oak Ridge, Tennessee 37831-6196 (865) 574-4495
7su@ornl.gov
If to Sense:
Dore Perler, President and CEO Facsimile No.
Sense Holdings, Inc. 954-726-2022
4503 NW 103 Ave,Suite 200, Verify No.
Sunrise, Florida 33351, 954-726-1422,Ext 101
dore@senseme.com
11.2. All financial obligations, with the
_____________
Sense Holdings, Inc) – instrument signed by the duly authorized
representatives of both of the Parties. The patent license agreement entered
into by UT-Battelle and Microsensor Technologies, Inc (a wholly-owned subsidiary
of Sense Holdings, Inc) with an effective date of March 26, 2001 (twice amended)
is hereby superseded and replaced by this Agreement, effective as of the
Effective Date of this Agreement.
14.2.
_____________
Sense Holdings, Inc. – Parties hereto have caused this Agreement to be
duly executed in their respective names by their duly authorized
representatives.
UT-BATTELLE, LLC
By:
---------------------------------------------------------------------------
Casey Porto, Director of Technology Transfer
Date:
-------------------------------------------------------------------------
Sense Holdings, Inc.
By:
---------------------------------------------------------------------------
Dore Perler, President and CEO
Date:
-------------------------------------------------------------------------
{PAGE}
{table}
{caption}
EXHIBIT A: PROPRIETARY RIGHTS
Group I
{c} {c} {c} {c} {c}
--------------- ---------- ------------------------------ ------------------------- -------------- -----------------------------
Docket Country Title Inventor(s) Ser. No./Pat.
_____________
dt 1739895
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Exclusive Patent License Agreement
Exclusive Patent License Agreement (50K)
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Shaded Area - Internal University Use Only
PTM Agreement No.:
PTM Docket No.(s):Z05113
UNIVERSITY OF MINNESOTA
EXCLUSIVE PATENT LICENSE AGREEMENT
THIS AGREEMENT is dated and effective as of the date of last signature (the "Effective Date"), and is made by and between Regents of the University of Minnesota, a constitutional corporation under the laws of the state of Minnesota (the "University"), and
Imagenetix, a corporation, under the laws of the state of Nevada (the "Company").
Purpose
The . . .
2168682
|
Imagenetix
As referenced in this Exclusive Patent License Agreement:
Imagenetix, Inc. – Group
360 McNamara Alumni Center
200 Oak Street S.E.
Minneapolis, MN 55455-2006
Facsimile No.: (612) 626-9624
E-mail: contracts@mail.ogc.umn.edu
If to the Company:
Imagenetix, Inc.
Attn: William P. Spencer
16935 West Bernardo Drive, Suite 101
San Diego, CA 92127
Facsimile No.: 858-674-8455
E-mail: bill@imagenetix.net
14
22. Publicity. The University
_____________
dt 1563483
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Exclusive Patent License Agreement
Exclusive Patent License Agreement (50K)
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Shaded Area - Internal University Use Only
PTM Agreement No.:
PTM Docket No.(s):Z05113
UNIVERSITY OF MINNESOTA
EXCLUSIVE PATENT LICENSE AGREEMENT
THIS AGREEMENT is dated and effective as of the date of last signature (the "Effective Date"), and is made by and between Regents of the University of Minnesota, a constitutional corporation under the laws of the state of Minnesota (the "University"), and
Imagenetix, a corporation, under the laws of the state of Nevada (the "Company").
Purpose
The . . .
2254056
|
Imagenetix
As referenced in this Exclusive Patent License Agreement:
Imagenetix, Inc. – Group
360 McNamara Alumni Center
200 Oak Street S.E.
Minneapolis, MN 55455-2006
Facsimile No.: (612) 626-9624
E-mail: contracts@mail.ogc.umn.edu
If to the Company:
Imagenetix, Inc.
Attn: William P. Spencer
16935 West Bernardo Drive, Suite 101
San Diego, CA 92127
Facsimile No.: 858-674-8455
E-mail: bill@imagenetix.net
14
22. Publicity. The University
_____________
dt 1563484
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Exclusive Patent License Agreement
Exclusive Patent License Agreement (25K)
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EXCLUSIVE PATENT LICENSE AGREEMENT
This EXCLUSIVE PATENT LICENSE AGREEMENT is entered into as of April 2,
1997, between IriSys Research & Development, LLC ("LICENSEE") and the Center for
Neurologic Study ("LICENSOR").
NOW, THEREFORE, the parties hereby agree as follows:
1. CERTAIN DEFINITIONS.
1.1 An "AFFILIATE" of a party means an entity directly or
indirectly controlling, controlled by or under common control with that party
provided that such entity will be considered an Affiliate . . .
1029000
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Exclusive Patent License Agreement
Exclusive Patent License Agreement (52K)
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<TEXT>
EXHBIT 10.4
EXCLUSIVE PATENT LICENSE AGREEMENT
by and between
WOLFGANG GRABHER
("Licensor")
and
ADMINISTRATION FOR INTERNATIONAL CREDIT & INVESTMENT, INC.
("Licensee")
. . .
1350562
| | |
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Patent License Agreement
Patent License Agreement (86K)
Doc #237403: Click preview link for longer preview.
PUBLIC HEALTH SERVICE
PATENT LICENSE AGREEMENT--EXCLUSIVE
COVER PAGE
For PHS internal use only:
Patent License Number: [**]
Serial Number(s) of Licensed Patent(s) and/or Patent Application(s):
1) U.S. Utility Patent Application No. [**].
2) U.S. Utility Patent Application No. [**].
Licensee: Millennium Pharmaceuticals, Inc.
75 Sidney Street
Cambridge, MA 02139
Cooperative Research and Development AGREEMENT (CRADA) Number (if
applicable): CRADA No. 0676
Additional Remarks: None
Public Benefit(s): LICENSEE agrees, after its FIRST COMMERCIAL SALE, to
make reasonable quantities of LICENSED PRODUCT(S) or
materials produced through the use of LICENSED
PROCESS(ES) available on a compassionate use basis to
patients, either through the patient's physician(s)
and/or the medical center treating the patient; and
LICENSEE further agrees, after its FIRST COMMERCIAL SALE
and as part of its marketing and product promotion, to
develop written educational materials (e.g., brochures,
advertisements, etc.) directed to patients and
physicians detailing the LICENSED PRODUCT(S) and/or
medical aspects of using the LICENSED PRODUCT(S).
This Patent License Agreement, hereinafter referred to as the "AGREEMENT",
consists of this Cover Page, an attached AGREEMENT, a Signature Page, Appendix A
(List of Patent(s) and/or Patent Application(s)), Appendix B (Fields of Use and
Territory), Appendix C (Royalties), Appendix D (Modifications), Appendix E
(Benchmarks), and Appendix F (Commercial Development Plan). The Parties to this
Agreement are:
PHS Patent License Agreement--EXCLUSIVE CONFIDENTIAL (A#: A-271-2001]
Model 980611a Page 1 of 31 (Final) (Millennium Pharmaceuticals, Inc.)
[November 12, 2002]
{Page}
1) The National Institutes of Health ("NIH"), the Centers for
Disease Control and Prevention ("CDC"), or the Food and Drug
Administration ("FDA"), hereinafter singly or collectively
referred to as "PHS", agencies of the United States Public
Health Service within the Department of Health and Human
Services ("DHHS"); and
2) The person, corporation, or institution identified above
and/or on the Signature Page, having offices at the address
indicated on the Signature Page, hereinafter referred to as
"LICENSEE".
PHS Patent License Agreement--EXCLUSIVE CONFIDENTIAL (A#: A-271-2001]
Model 980611a Page 2 of 31 (Final) (Millennium Pharmaceuticals, Inc.)
[November 12, 2002]
{Page}
PHS PATENT LICENSE AGREEMENT -- EXCLUSIVE
PREAMBLE
Whereas PHS and LICENSEE were parties to a Cooperative Research and Development
Agreement (CRADA) (CACR 0676) entered into in December 1998; and
Whereas in the course of performing biomedical research under the CRADA, PHS
investigators and employees of LICENSEE made certain inventions that resulted in
the filing of certain patent applications set forth in Appendix A; and
Whereas LICENSEE filed the patent application designated by Roman numeral I
listed in Appendix A; and
Whereas PHS filed the patent application designated by Roman numeral II listed
in Appendix A; and
Whereas PHS and LICENSEE intend to prosecute any claims under such patent
applications in accordance with the laws governing, and rules and regulations
of, the United States Patent and Trademark Office and to enter into this
agreement to promote the commercialization of said inventions.
Now, therefore, PHS and LICENSEE agree as follows:
1. BACKGROUND
1.01 In the course of conducting biomedical and behavioral research,
PHS investigators made inventions that may have commercial
applicability.
1.02 By assignment of rights from PHS employees and other inventors,
DHHS, on behalf of the United States Government, owns intellectual
property rights claimed in any United States and/or foreign patent
applications or patents corresponding to the assigned inventions.
DHHS also owns any tangible embodiments of these inventions
actually reduced to practice by PHS.
1.03 The Secretary of DHHS has delegated to PHS the authority to enter
into this AGREEMENT for the licensing of rights to these
inventions.
1.04 PHS desires to transfer these inventions to the private sector
through commercialization licenses to facilitate the commercial
development of products and processes for public use and benefit.
1.05 LICENSEE desires to acquire commercialization rights to certain of
these inventions in order to develop processes, methods, and/or
marketable products for public use and benefit.
PHS Patent License Agreement--EXCLUSIVE CONFIDENTIAL (A#: A-271-2001]
Model 980611a Page 3 of 31 (Final) (Millennium Pharmaceuticals, Inc.)
[November 12, 2002]
{Page}
2. DEFINITIONS
2.01 "BENCHMARKS" mean the performance milestones that are set forth in
Appendix E.
2.02 "COMMERCIAL DEVELOPMENT PLAN" means the written commercialization
plan attached as Appendix F.
2.03 "FIRST COMMERCIAL SALE" means the initial transfer by or on behalf
of LICENSEE or its sublicenses of LICENSED PRODUCTS or the initial
practice of a LICENSED PROCESS by or on behalf of LICENSEE or its
sublicenses in exchange for cash or some equivalent to which value
can be assigned for the purpose of determining NET SALES. Transfer
of LICENSED PRODUCTS or practice of a LICENSED PROCESS for test
marketing, sampling and promotional uses, clinical trial purposes
or compassionate or similar use shall not be considered to
constitute a FIRST COMMERCIAL SALE.
2.04 "GOVERNMENT" means the Government of the United States of America.
2.05 "LICENSED FIELDS OF USE" means the fields of use identified in
Appendix B.
2.06 "LICENSED FIELDS OF USE I" means the field of use identified in
Appendix B with the Roman numeral I.
2.07 "LICENSED FIELDS OF USE II" means the field of use identified in
Appendix B with the Roman numeral II.
2.08 "LICENSED PATENT RIGHTS" shall means DHHS' ownership interest in:
(a) Patent applications (including provisional patent
applications and PCT patent applications) and/or patents
listed in Appendix A, all divisions and continuations of
these applications, all patents issuing from such
applications, divisions, and continuations, and any
reissues, reexaminations, renewals and extensions (including
any Supplemental Patent Certificate) of all such patents,
and any confirmation patent, registration patent or patent
of addition of all such patents;
(b) to the extent that the following contain one or more claims
directed to the invention or inventions disclosed in a)
above: i) continuations-in-part of a) above; ii) all
divisions and continuations of these continuations-in-part;
iii) all patents issuing from such continuations-in-part,
divisions, and continuations; iv) priority patent
application(s) of a) above; and v) any reissues,
reexaminations renewals and extensions (including any
Supplemental Patent Certificate) of all such patents and any
confirmation patent, registration patent or patent of
addition of all such patents;
PHS Patent License Agreement--EXCLUSIVE CONFIDENTIAL (A#: A-271-2001]
Model 980611a Page 4 of 31 (Final) (Millennium Pharmaceuticals, Inc.)
[November 12, 2002]
{Page}
(c) to the extent that the following contain one or more claims
directed to the invention or inventions disclosed in a)
above: all counterpart foreign and U.S. patent applications
and patents to a) and b) above, including those listed in
Appendix A.
LICENSED PATENT RIGHTS shall not include b) or c) above to the
extent that they contain one or more claims directed to new matter
which is not the subject matter disclosed in a) above.
2.09 "LICENSED PROCESS(ES)" means processes which, in the course of
being practiced would be within the scope of one or more claims of
the LICENSED PATENT RIGHTS that have not been held unpatentable,
invalid or unenforceable by an unappealed or unappealable judgment
of a court of competent jurisdiction.
2.10 "LICENSED PRODUCT(S)" means tangible materials which, in the
course of manufacture, use, sale, offer for sale or importation
would be within the scope of one or more claims of the LICENSED
PATENT RIGHTS that have not been held unpatentable, invalid or
unenforceable by an unappealed or unappealable judgment of a court
of competent jurisdiction.
2.11 "LICENSED TERRITORY" means the geographical area identified in
Appendix B.
2.12 "NET SALES" means the total gross receipts for sales or other
disposition of LICENSED PRODUCTS or practice of LICENSED PROCESSES
by or on behalf of LICENSEE or its sublicenses, whether invoiced
or not, less returns and allowances, packing costs, insurance
costs, freight out, taxes or excise duties imposed on the
transaction (if separately invoiced), wholesaler and cash
discounts in amounts customary in the trade to the extent actually
granted, and credits or allowances given or made for wastage
replacement, indigent patient and any other sales programs. No
deductions shall be made for commissions paid to individuals,
whether they be with independent sales agencies or regularly
employed by LICENSEE, or sublicenses, and on its payroll, or for
the cost of collections.
2.13 "PRACTICAL APPLICATION" means to manufacture in the case of a
composition or product, to practice in the case of a process or
method, or to operate in the case of a machine or system; and in
each case, under such conditions as to establish that the
invention is being utilized and that its benefits are to the
extent permitted by law or GOVERNMENT regulations available to the
237403
|
Millennium
As referenced in this Patent License Agreement:
Millennium Pharmaceuticals, Inc – Licensed Patent(s) and/or Patent Application(s):
1) U.S. Utility Patent Application No. [**].
2) U.S. Utility Patent Application No. [**].
Licensee: Millennium Pharmaceuticals, Inc .
75 Sidney Street
Cambridge, MA 02139
Cooperative Research and Development AGREEMENT (CRADA) Number (if
applicable): CRADA No. 0676
Additional Remarks: None
Public
_____________
(Millennium Pharmaceuticals, Inc – The Parties to this
Agreement are:
PHS Patent License Agreement--EXCLUSIVE CONFIDENTIAL (A#: A-271-2001]
Model 980611a Page 1 of 31 (Final) (Millennium Pharmaceuticals, Inc .)
[November 12, 2002]
{Page}
1) The National Institutes of Health ("NIH"), the Centers for
Disease Control and Prevention ("CDC"), or the Food
_____________
(Millennium Pharmaceuticals, Inc – Page, hereinafter referred to as
"LICENSEE".
PHS Patent License Agreement--EXCLUSIVE CONFIDENTIAL (A#: A-271-2001]
Model 980611a Page 2 of 31 (Final) (Millennium Pharmaceuticals, Inc .)
[November 12, 2002]
{Page}
PHS PATENT LICENSE AGREEMENT -- EXCLUSIVE
PREAMBLE
Whereas PHS and LICENSEE were parties to a Cooperative Research and Development
_____________
(Millennium Pharmaceuticals, Inc – products for public use and benefit.
PHS Patent License Agreement--EXCLUSIVE CONFIDENTIAL (A#: A-271-2001]
Model 980611a Page 3 of 31 (Final) (Millennium Pharmaceuticals, Inc .)
[November 12, 2002]
{Page}
2. DEFINITIONS
2.01 "BENCHMARKS" mean the performance milestones that are set forth in
Appendix E.
2.02 "
_____________
(Millennium Pharmaceuticals, Inc – of
addition of all such patents;
PHS Patent License Agreement--EXCLUSIVE CONFIDENTIAL (A#: A-271-2001]
Model 980611a Page 4 of 31 (Final) (Millennium Pharmaceuticals, Inc .)
[November 12, 2002]
{Page}
(c) to the extent that the following contain one or more claims
directed to the invention or inventions
_____________
dt 588654
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Exclusive Patent License Agreement
Exclusive Patent License Agreement (28K)
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EXCLUSIVE PATENT LICENSE AGREEMENT
This Exclusive Patent License Agreement (this �Agreement�) is made effective as of the Effective Date (as defined below) by and between Orchid BioSciences, Inc. (�ORCHID�), a Delaware corporation and Saint Louis University, a non-profit organization organized and existing under the laws of the State of Missouri (�SLU�). ORCHID and SLU are hereinafter referred to collectively as the �Parties.�
RECITALS:
A. WHEREAS, SLU is the owner of U.S. Patent No. 5,846,710, entitled Method for the Detection of Genetic Diseases and Gene . . .
322233
|
Orchid
As referenced in this Exclusive Patent License Agreement:
Orchid BioSciences, Inc – LICENSE AGREEMENT
This Exclusive Patent License Agreement (this Agreement) is made effective as of the Effective Date (as defined below) by and between Orchid BioSciences, Inc . (ORCHID), a Delaware corporation and Saint Louis University, a non-profit organization organized and existing under the laws of the State of
_____________
ORCHID BIOSCIENCES, INC – 10
IN WITNESS WHEREOF, the parties hereto have executed this Exclusive Patent License Agreement on the date first written above.
SAINT LOUIS UNIVERSITY
ORCHID BIOSCIENCES, INC .
By:
/s/
By:
/s/
Name:
Robert N. Altholtz
Name:
Paul J. Kelly
Title:
Vice President
Title:
CEO
11
_____________
dt 545905
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Patent License Agreement - Exclusive
Patent License Agreement - Exclusive (47K)
Doc #329340: Click preview link for longer preview.
NATIONAL INSTITUTES OF HEALTH
CENTERS FOR DISEASE CONTROL
PATENT LICENSE AGREEMENT�EXCLUSIVE
COVER PAGE
For Office of Technology Transfer/NIH internal use only:
Patent License Number. L-006-96
Serial Numbers of Licensed Patents: U.S. Patent 5,208.021 (USSN 07/301,376); U.S. Patent 5,352,447 (USSN 07/925,417); and USSN 08/258,712. Canadian Serial No. 589,789 and Canadian Serial No. 608,247.
Licensee: Nycomed Pharma AS.
CRADA Number (if applicable): 90-001-NS
Additional Remarks:
This Patent License Agreement, hereinafter referred to as . . .
329340
| | |
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Exclusive Patent License Agreement
Exclusive Patent License Agreement (28K)
Doc #1271891: Click preview link for longer preview.
EXCLUSIVE PATENT LICENSE AGREEMENT
THIS EXCLUSIVE PATENT LICENSE AGREEMENT ("Agreement") is made and entered into
on this _______ day of _______________, 2004 by and between Lo-Tow Axles Pty.
Ltd., an Australian business entity (the "Licensor"), John Simpson, an
individual residing in the State of Florida ("Simpson") and Dtomi, Inc.
("Licensee") a Nevada corporation, having its principal office at 200 Ninth
Avenue North, Suite 200, Safety Harbor, Florida 34695.
. . .
1271891
| | |
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Exclusive Patent License Agreement
Exclusive Patent License Agreement (46K)
Doc #145687: Click preview link for longer preview.
EXCLUSIVE PATENT LICENSE AGREEMENT
BETWEEN
WESTINGHOUSE SAVANNAH RIVER COMPANY LLC
AND
FINGERPRINT DETECTION TECHNOLOGIES, INC. (FDTI),
A WHOLLY-OWNED SUBSIDIARY OF UTEK CORPORATION
FOR
LED INTENSE HEADBAND LIGHT SOURCE FOR FINGER PRINT ANALYSIS
WSRC LICENSE AGREEMENT NO. LA-02-003
WESTINGHOUSE SAVANNAH RIVER COMPANY LLC
AIKEN, SOUTH CAROLINA
{PAGE}
TABLE OF CONTENTS
{TABLE}
{CAPTION}
Article Page
------- ----
{S} {C}
1. Definitions............................................................................ 1
2. License Grant.......................................................................... 2
3. Sublicenses............................................................................ 3
4. Due Diligence.......................................................................... 4
5. License Fees........................................................................... 5
6. Records and Reports.................................................................... 6
7. Technical Assistance................................................................... 7
8. Patent Prosecution and Maintenance..................................................... 7
9. Infringement By Third Parties.......................................................... 7
10. Representation and Warranties.......................................................... 8
11. Disclaimers............................................................................ 9
12. Term of Agreement and Early Termination................................................ 10
13. Rights of the Parties After Termination................................................ 11
14. Use of Names and Trademarks; Nondisclosure Agreement................................... 12
15. Force Majeure ......................................................................... 12
16. Assignability ......................................................................... 12
17. Non-Abatement of Royalties............................................................. 13
18. Notices................................................................................ 13
19. Dispute Resolution..................................................................... 14
20. Governing Law.......................................................................... 15
21. Waivers................................................................................ 15
22. Modifications.......................................................................... 15
23. Headings............................................................................... 15
Appendix A - WSRC Patent Rights............................................................... A.1
Appendix B - Development and Commercialization Plan
(Proprietary Information)........................................................ B.1
Appendix C - Issue Fee, Earned Royalties and Minimum Annual
Royalties (Proprietary Information).............................................. C.1
{/TABLE}
i
{PAGE}
EXCLUSIVE PATENT LICENSE AGREEMENT
This License Agreement, effective from the date of execution by the last signing
Party, is by and between WESTINGHOUSE SAVANNAH RIVER COMPANY LLC (hereinafter
"WSRC"), a Delaware corporation whose principal place of business is located at
Aiken, South Carolina and Fingerprint Detection Technologies, Inc. (FDTI),
(hereinafter "LICENSEE"), a Florida corporation whose principal place of
business is located at 202 S. Wheeler Street, Plant City, FL 33563; the Parties
to this License Agreement being referred to individually as a "Party," and
collectively as "Parties."
BACKGROUND:
WHEREAS, WSRC, pursuant to Contract No. DE-AC09-96SR18500 (hereinafter "Prime
Contract") with the United States Government as represented by the Department of
Energy (hereinafter "DOE") has developed and/or obtained certain WSRC Patent
Rights relating to Licensed Products subject to a reservation in the Government
to a nonexclusive, nontransferable, irrevocable, paid-up license to practice and
have practiced throughout the world, by or on behalf of the Government, any and
all such rights as well as certain march-in rights and any other conditions of
waivers granted by DOE; and
WHEREAS, LICENSEE desires to obtain rights under WSRC Patent Rights.
THEREFORE, in consideration of the premises, covenants and agreements contained
herein, the Parties hereto agree to be bound as follows:
1. DEFINITIONS
1.1 "WSRC Patent Rights" shall mean any and all intellectual property rights
or patent rights to any subject matter claimed in or disclosed in Appendix
A to this Agreement and all United States and corresponding foreign
patents issuing from United States patent applications and corresponding
patent applications later filed in foreign jurisdictions, including all
divisions, continuations, continuations-in-part, re-examinations,
reissues, and temporal extensions of any of the foregoing.
145687
| Westinghouse Savannah River Company LLC;
Fingerprint Detection Technologies, Inc.;
| Utek Corp.
|
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Patent License Agreement (Exclusive)
Patent License Agreement (Exclusive) (53K)
Doc #145791: Click preview link for longer preview.
PATENT LICENSE AGREEMENT
--EXCLUSIVE--
Cover Page
Patent License Issued: May 27, 2003
Serial Numbers of Licensed Patents: U.S. Design Patent no. D 475,161
Licensee: Sport Technologies, Inc., of Plant City, Florida
Additional Remarks: Sport Technologies, Inc. intends to be acquired by
GloTech Industries, Inc., of Gainesville, Florida within 30 days of the
execution of this license agreement
This Patent License Agreement, hereinafter referred to as the "AGREEMENT,"
consists of this Cover Page, an attached AGREEMENT, a Signature Page, Appendix A
(List of Patent(s) or Patent Application(s)), Appendix B (Fields of Use and
Territory), Appendix C (Royalties), Appendix D (Modifications), Appendix E
(Benchmarks), and Appendix F (Commercial Development Plan). The Parties to this
AGREEMENT are:
1) Paul D. Mundy ("PDM"), Inventor, hereinafter singly referred to as "PDM";
and
2) The person, corporation, or institution identified ABOVE AND/OR ON THE
Signature Page, having offices at the address indicated on the Signature
Page, hereinafter referred to as "Licensee."
Page 1 of 21
{PAGE}
PATENT LICENSE AGREEMENT--EXCLUSIVE
PDM and LICENSEE agree as follows:
1. BACKGROUND
1.01 In the course of conducting investigative work and research,
PDM made inventions that may have commercial applicability.
1.02 By assignment of patent rights from US Patent Office, PDM owns
intellectual property rights claimed in any United States and
foreign patent applications or patents corresponding to the
assigned inventions.
1.03 PDM has the authority to enter into this AGREEMENT for the
licensing of rights to this invention.
1.04 PDM desires to transfer these inventions to the private sector
through commercialization licenses to facilitate the
commercial development of products and processes for public
use and benefit.
1.05 LICENSEE desires to acquire commercialization rights to
certain of these inventions in order to develop processes,
methods, or marketable products for public use and benefit.
2. DEFINITIONS
2.01 "BENCHMARKS" mean the performance milestones that are set
forth in Appendix E.
2.02 "COMMERCIAL DEVELOPMENT PLAN" means the written
commercialization plan attached as Appendix F.
2.03 "FIRST COMMERCIAL SALE" means the initial transfer by or on
behalf of LICENSEE or its sublicensees of LICENSED PRODUCTS or
the initial practice of a LICENSED PROCESS by or on behalf of
LICENSEE or its sublicensees in exchange for cash or some
equivalent to which value can be assigned for the purpose of
determining NET SALES.
2.05 "LICENSED FIELDS OF USE" means the fields of use identified in
Appendix B.
2.06 "LICENSED PATENT RIGHTS" shall mean:
a) U.S. patent applications and patents listed in
Appendix A, all divisions and continuations of these
applications, all patents issuing from such
applications, divisions, and continuations, and any
reissues, reexaminations, and extensions of all such
patents;
b) to the extent that the following contain one or more
claims directed to the invention or inventions
disclosed in a) above: i) continuations-in-part of a)
above; ii) all divisions and continuations of these
continuations-in-part; iii) all patents issuing from
such continuations-in-part, divisions, and
145791
| Sport Technologies, Inc.;
| Utek Corp.
|
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| 2003 |
Exclusive Patent License Agreement
Exclusive Patent License Agreement (71K)
Doc #145843: Click preview link for longer preview.
EXCLUSIVE PATENT LICENSE AGREEMENT
THIS EXCLUSIVE PATENT LICENSE AGREEMENT ("Agreement") is made and entered into
as of July 31, 2003 (the "Signing Date") by and between John Simpson
("Licensor"), an individual, residing at 2468-3 Enterprise Road, Clearwater,
Florida 33763, and Dtomi, Inc. ("Licensee") a Nevada corporation, having its
principal office at 200 Ninth Avenue North, Suite 200, Safety Harbor, Florida
34695.
WITNESSETH
WHEREAS, Licensor is the sole owner and holder of the Patent and Licensed
Products (defined herein); and
WHEREAS, Licensee desires to acquire an exclusive License (defined herein) for a
definite term under such Patent and Licensed Products; and
WHEREAS, Licensor is willing to grant such License to Licensee.
NOW, THEREFORE, in consideration of the mutual covenants and promises contained
herein, the parties hereto agree as follows:
1. DEFINITIONS.
When used in this License Agreement, the terms listed below shall have
the following meanings:
1.1 "IMPROVEMENT" or "IMPROVEMENTS" shall mean any modification of, or
alteration to, the Patents.
1.2 "LICENSED PRODUCTS" shall mean any and all products which employ or
are produced by the practices of inventions claimed in the Patent.
1.3 "LICENSED TERRITORY" shall mean the entire world.
1.4 "PATENT" shall mean collectively the United States patents
described in the attached EXHIBIT A, including any Improvements made thereto.
2. CONDITION PRECEDENT. Notwithstanding the parties' execution of this
Agreement, this Agreement shall not become effective until such time as the
following event occurs:
(a) The parties hereto execute that certain Consulting Agreement,
attached hereto as EXHIBIT B.
145843
| John Simpson;
| Dtomi Inc.
|
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Patent License Agreement (Exclusive) (49K)
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PATENT LICENSE AGREEMENT
EXCLUSIVE
Cover Page
Patent License Issued: May 27, 2003
Serial Numbers of Licensed Patents: U.S. Design Patent no. D 475,161
Licensee: Sport Technologies, Inc., of Plant City, Florida
Additional Remarks: Sport Technologies, Inc. intends to be acquired by GloTech
Industries, Inc., of Gainesville, Florida within 30 days of the execution of
this license agreement.
This Patent License Agreement, hereinafter referred to as THE "AGREEMENT,"
consists of this Cover Page, an attached AGREEMENT, a Signature Page, Appendix A
(List of Patent(s) or Patent Application(s)), Appendix B (Fields of Use and
Territory), Appendix C (Royalties), Appendix D (Modifications), Appendix E
(Benchmarks), and Appendix F (Commercial Development Plan). The Parties to this
AGREEMENT are:
1) Paul D. Mundy ("PDM"), inventor, hereinafter singly referred to as "PDM";
and
2) The person, corporation, or institution identified ABOVE AND/OR ON the
Signature Page, having offices at the address indicated on the Signature
Page, hereinafter referred to as "Licensee,"
1
{PAGE}
PATENT LICENSE AGREEMENT--EXCLUSIVE
PDM and LICENSEE agree as follows:
BACKGROUND
----------
1.01 In the course of conducting investigative work and research, PDM made
inventions that may have commercial applicability.
1.02 By assignment of patent rights from US Patent Office, PDM owns
intellectual property rights claimed in any United States and foreign
patent applications or patents corresponding to the assigned
inventions.
1.03 PDM the authority to enter into this Agreement for the licensing of
rights to these inventions.
1.04 PDM desires to transfer these inventions to the private sector through
commercialization licenses to facilitate the commercial development of
products and processes for public use and benefit.
1.05 LICENSEE desires to acquire commercialization rights to certain of
these inventions in order to develop processes, methods, or marketable
products for public use and benefit.
DEFINITIONS
-----------
2.01 "BENCHMARKS" mean the performance milestones that are set forth in
Appendix E.
2.02 "COMMERCIAL DEVELOPMENT PLAN" means the written commercialization plan
attached as Appendix F.
2.03 "FIRST COMMERCIAL SALE" means the initial transfer by or on behalf of
LICENSEE or its sublicensees OF LICENSED PRODUCTS or the initial
practice of a LICENSED PROCESS by or on behalf of LICENSEE or its
sublicensees in exchange for cash or some equivalent to which value
can be assigned for the purpose of determining NET SALES.
2.05 "LICENSED FIELDS OF USE" means the field(s) of use identified in
Appendix B.
2.06 "LICENSED PATENT RIGHTS" shall mean:
a) U.S. patent applications and patents listed in Appendix A, all
divisions and continuations of these applications, all patents
issuing from such applications, divisions, and continuations, and
any reissues, reexaminations, and extensions of all such patents;
b) to the extent that the following contain one or more claims
directed to the invention or inventions disclosed in a) above: i)
continuations-in-part of a) above; ii) all divisions and
continuations of these continuations-in-part; iii) all patents
issuing from such continuations-in-part, divisions, and
continuations; and iv) any reissues, reexaminations, AND
EXTENSIONS OF ALL SUCH PATENTS;
148771
| Sport Technologies, Inc.;
Paul D. Mundy;
| Glotech Industries Inc.
|
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Exclusive Patent License Agreement
Exclusive Patent License Agreement (43K)
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EXCLUSIVE PATENT LICENSE AGREEMENT
NUTRACEUTIX, INC.
AND
ARCHER-DANIELS-MIDLAND COMPANY
1
{PAGE}
TABLE OF CONTENTS
PREAMBLE
1. Definitions
2. Grant of License
3. Consideration
4. Infringement
5. Limited Warranty and Indemnification
6. Term and Termination
7. Reasonable efforts
8. Packaging, Labels and Promotional Items
9. Protection of Proprietary Rights
10. Assignment
11. Disputes; Arbitration
12. Governing Law
13. Force Majeure
14. Notices
15. Miscellaneous
2
{PAGE}
EXCLUSIVE PATENT LICENSE AGREEMENT
THIS AGREEMENT ("Agreement") made as of the 8th day of March, 2002 by and
between Nutraceutix, Inc., a Delaware corporation (hereinafter referred to as
"Nutraceutix") and Archer-Daniels-Midland Company, a Delaware corporation
(hereinafter referred to as "ADM").
WITNESSETH:
WHEREAS, Nutraceutix holds an exclusive license to certain patents and
patent applications and is the owner of certain patents and patent applications
in the United States and in other countries in the world relating to controlled
delivery technology;
WHEREAS, ADM desires that Nutraceutix grant ADM a license in the Territory
(as defined below) to manufacture, use, sell and offer to sell the Licensed
Products (as defined below) in the Licensed Field of Use (as defined below)
pursuant to the terms and conditions set forth in this Agreement; and
NOW, THEREFORE, in consideration of the premises and the mutual agreements
contained herein, and intending to be legally bound hereby, the Parties agree
as follows:
ARTICLE 1. DEFINITIONS
For the purposes of this Agreement, unless the context clearly or necessarily
requires otherwise, the following terms shall have the meanings set forth below:
1.1 "Parties" shall mean both Nutraceutix and ADM, and the "Party" shall mean
either of them.
1.2 "Affiliate" of a Party shall mean any company, corporation, partnership,
syndicate or other entity that, directly or indirectly, through one or more
intermediaries, controls, is controlled by, or is under common control with,
such Party. "Control" shall mean ownership of fifty-one percent (51%) or more
of the voting rights or equity in the specified entity.
1.3 "Contract Year" shall mean any of the following occurring during the term
hereof: (i) the period that begins on the Effective Date and ends on the
following December 31; (ii) any calender year thereafter; or (iii) the period
that ends on the date on which this Agreement expires or terminates and that
begins on the prior January 1. Provided, however, if this Agreement expires or
terminates on January 1, the Contract Year referred to in (ii) above shall be
one day in length.
1.4 "Contract Quarter" shall mean any of the following occurring during the
term hereof: (i) the period that begins on the Effective Date and ends on the
first to occur of the following; March 31, June 30, September 30, or December
31; (ii) any calender quarter thereafter; or (iii) the period that ends on the
date on which this Agreement expires or terminates and that begins with the
last to occur prior thereto of the preceding January 1, April 1, July 1 or
October 1. Provided, however, that if this Agreement expires or
148896
|
ADM
As referenced in this Exclusive Patent License Agreement:
ARCHER-DANIELS-MIDLAND – 10.15
{SEQUENCE}3
{FILENAME}v88046exv10w15.txt
{DESCRIPTION}EXHIBIT 10.15
{TEXT}
{PAGE}
EXHIBIT 10.15
EXCLUSIVE PATENT LICENSE AGREEMENT
NUTRACEUTIX, INC.
AND
ARCHER-DANIELS-MIDLAND COMPANY
1
{PAGE}
TABLE OF CONTENTS
PREAMBLE
1. Definitions
2. Grant of License
3. Consideration
4. Infringement
5. Limited Warranty and Indemnification
6.
_____________
Archer-Daniels-Midland – made as of the 8th day of March, 2002 by and
between Nutraceutix, Inc., a Delaware corporation (hereinafter referred to as
"Nutraceutix") and Archer-Daniels-Midland Company, a Delaware corporation
(hereinafter referred to as "ADM").
WITNESSETH:
WHEREAS, Nutraceutix holds an exclusive license to certain patents and
patent applications and
_____________
Archer-Daniels-Midland – Nutraceutix, Inc.
8340 154th Ave. N.E.
Redmond, WA 98052
Attn: David Howard
Telephone: 425-883-9518
Facsimile: 425-869-1020
To ADM: Archer-Daniels-Midland Company
4666 Faries Parkway
Decatur, Illinois 62526
Attn: President, ADM Natural Health & Nutrition
Telephone: 217-451-4019
Facsimile: 217-362-8166
With copy
_____________
Archer-Daniels-Midland – 4666 Faries Parkway
Decatur, Illinois 62526
Attn: President, ADM Natural Health & Nutrition
Telephone: 217-451-4019
Facsimile: 217-362-8166
With copy to: Archer-Daniels-Midland Company
4666 Faries Parkway
Decatur, Illinois 62526
Attn: General Counsel
Telephone: 217-424-5200
Facsimile: 217-451-6196
Either Party may change the
_____________
ARCHER DANIELS MIDLAND – and year
above written.
NUTRACEUTIX, INC.
/s/ David G. Howard
By:________________________
Name: President & CEO
______________________
Title: ____________________
Date: 3-25-2002
_____________________
ARCHER DANIELS MIDLAND COMPANY
/s/ Anthony P. DeLio
By: _________________________________________
Anthony P. DeLio
Name: _______________________________________
President, Natural Health & Nutrition
Title: ______________________________________
3-25-02
Date: ______________________
_____________
dt 147644
;
Nutraceutix, Inc.;
| Archer-Daniels-Midland Company;
Scolr Inc.
|
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Exclusive Patent License Agreement
Exclusive Patent License Agreement (48K)
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EXCLUSIVE PATENT LICENSE AGREEMENT
between
AVENTIS BEHRING GMBH
AND
ZYMOGENETICS, INC.
This Exclusive Patent License Agreement (the "Agreement") is effective as of
December 18, 2002 ("Effective Date") by and between Aventis Behring GmbH
("Licensor"), a German corporation having a principal place of business at
Emil-von-Behring-Strasse 76, D-35041 Marburg, Germany, and ZymoGenetics, Inc.
("Licensee"), a Washington corporation having a principal place of business at
1201 Eastlake Avenue East, Seattle, Washington 98102.
WITNESSETH
WHEREAS, Licensor and Licensee are parties to Interference No. ****
relating to Factor XIII pending in the United States Patent and Trademark office
involving certain patent applications owned or controlled by Licensee and a
patent application within the "Licensed Patents" (as hereinafter defined) owned
by Licensor;
WHEREAS, Licensor is a successor to certain patent rights of Behringwerke
Aktiengesellschaft, which previously entered into a Cross License Agreement with
Hoechst Japan, Ltd. and Licensee relating to Factor XIII dated May 3, 1993
regarding certain patents and patent applications owned or controlled by
Licensee and certain patents and patent applications within the Licensed Patents
owned or controlled by Licensor ("Cross License Agreement");
WHEREAS, Licensor is the present owner or exclusive licensee of the
Licensed Patents;
WHEREAS, Licensee desires to modify certain licenses granted under the
Cross License Agreement as such licenses relate to Licensor and Licensee and
obtain from Licensor an exclusive worldwide license under the Licensed Patents
in the Field of Use for Licensed Products in accordance with the terms of this
Agreement;
**** designates portions of this document that have been omitted pursuant to a
request for confidential treatment filed separately with the commission.
-1-
{PAGE}
WHEREAS, Licensor is willing to modify certain licenses granted under the
Cross License Agreement as such licenses relate to Licensor and Licensee and
grant an exclusive worldwide license under the Licensed Patents in the Field of
Use for Licensed Products to Licensee on the terms and conditions set forth
herein;
NOW THEREFORE, in consideration of the mutual covenants contained herein,
it is agreed by the parties as follows:
1. DEFINITIONS
1.1 Affiliate means any company, corporation, business or entity controlled
by, controlling, or under common control with either Licensee or Licensor.
"Control" means direct or indirect beneficial ownership of at least fifty
percent (50%) interest in the voting stock (or the equivalent) of such
corporation or other business or having the right to direct, appoint or remove a
majority or more of the members of its board of directors (or their equivalent).
1.2 Biologically Active Substance means any substance other than Recombinant
Factor XIII that has intrinsic biological or cell stimulatory activity but not
including substances or compounds whose primary function is to act as a vehicle
for the delivery of Licensed Product, including but not limited to stabilizing
agents, excipients and adjuvants.
1.3 Combination Product means a Licensed Product that includes one or more
Biologically Active Substance(s) to achieve the desired therapeutic response.
1.4 Field of Use means the prevention, diagnosis or treatment of any disease
or condition in humans or animals.
1.5 First Commercial Sale means the first sale of any Licensed Product by
Licensee or its Affiliates or Sublicensees to a bona fide independent third
party.
1.6 Licensed Patents means: (a) the patents and the patent applications set
forth in Exhibits A and B (attached hereto) and made part of this Agreement; (b)
all parent, provisional, divisional, continuation (in whole or in part) or
substitute applications with respect to any of the patent applications described
in 1.6(a); (c) any other patent applications, both U.S. and foreign, based on
the patent applications described in 1.6(a) or 1.6(b); (d) all issued or granted
patents resulting from any of the patent applications described above; and (e)
all issued or granted reissue, re-examination, renewal or extension patents,
supplementary protection certificates, and confirmation or registration patents
or patents of addition based on any of the patents described in 1.6(a) or
1.6(d).
1.7 Licensed Product(s) means any product that contains Recombinant Factor
XIII and is covered by a Valid Claim of an issued patent falling within the
Licensed Patents or that, but for this Agreement, would infringe a Valid Claim
of an issued patent falling within the Licensed Patents.
148906
|
ZymoGenetics
As referenced in this Exclusive Patent License Agreement:
ZYMOGENETICS, – version of this exhibit has been
filed separately with the Securities and Exchange Commission.
EXCLUSIVE PATENT LICENSE AGREEMENT
between
AVENTIS BEHRING GMBH
AND
ZYMOGENETICS, INC.
This Exclusive Patent License Agreement (the "Agreement") is effective as of
December 18, 2002 ("Effective Date") by and between Aventis Behring
_____________
ZymoGenetics, – Behring GmbH
("Licensor"), a German corporation having a principal place of business at
Emil-von-Behring-Strasse 76, D-35041 Marburg, Germany, and ZymoGenetics, Inc.
("Licensee"), a Washington corporation having a principal place of business at
1201 Eastlake Avenue East, Seattle, Washington 98102.
WITNESSETH
WHEREAS, Licensor
_____________
ZymoGenetics, – Licensee and Licensor shall amend this Agreement
to terminate the Cross License Agreement, provided, however, the license granted
by Hoechst Japan, Ltd. to ZymoGenetics, Inc. under the Cross License Agreement
to the HJL Licensed Patent Rights (as defined in the Cross License Agreement)
shall remain in
_____________
ZymoGenetics, – Aventis Behring L.L.C.
1020 First Avenue
P.O. Box 61501
King of Prussia, PA 19406
Attention: General Counsel
If to ZGI: ZymoGenetics, Inc.
1201 Eastlake Avenue East
Seattle, WA 98102
Attention: Vice President, Intellectual Property and Legal
Affairs
or to such other addresses as
_____________
Zymogenetics, – subject matter, excluding the Cross
License Agreement. Notwithstanding the foregoing:
(a) the Interference Settlement Agreement dated November 1, 1997 between
Hoechst Aktiengesellschaft and Zymogenetics, Inc. shall remain in full force and
effect in accordance with its terms; and
(b) subject to Section 10.7 (c)hereinbelow,
_____________
dt 130453
;
| Aventis Behring GmbH
|
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Patent License Agreement--Exclusive
Patent License Agreement--Exclusive (98K)
Doc #237409: Click preview link for longer preview.
PUBLIC HEALTH SERVICE
PHS PATENT LICENSE AGREEMENT--EXCLUSIVE
COVER PAGE
For PHS internal use only:
Patent License Number: L-354-98/0, which relates to OTT Reference
Number E-016-96/0.
Serial Numbers of Patent Applications: 60/016,628, filed May 1, 1996,
entitled "21-substituted Progesterone Derivatives as New
Anti-Progestational Agents." Inventors for this application: Drs. Hyun
K. Kim (NICHD), Richard P. Blye (NICHD) and Drs. Pemmaraju Narasinha
Rao, James W. Cessac, and Carmie Kirk Acosta, all of Southwest
Foundation for Biomedical Research (SFBR).
LICENSEE: Zonagen, Inc., a Delaware corporation, having its principal
office at 2408 Timberloch Place, Suite B-4, The Woodlands, Texas 77380.
Cooperative Research and Development Agreement (CRADA) Number: None.
Additional Remarks: The terms of this AGREEMENT shall be considered
CONFIDENTIAL.
Public Benefit(s): The principal benefit of this invention is its
potential to treat diseases of hormonal or endocrine tissues.
This exclusive patent license agreement (hereinafter referred to as the
("AGREEMENT"), made effective the first date upon which all the Parties have
subscribed their signatures hereunto ("EFFECTIVE DATE"), consists of this Cover
Page, an attached AGREEMENT, a Signature Page, Appendix A (List of Patent(s)
and/or Patent Application(s)), Appendix B (LICENSED FIELDS-OF-USE and LICENSED
TERRITORY), Appendix C (Royalties), Appendix D (Modifications), Appendix E
(BENCHMARKS), and Appendix F (COMMERCIAL DEVELOPMENT PLAN). The Parties to this
AGREEMENT are:
1) The National Institutes of Health ("NIH"), the Centers for
Disease Control and Prevention ("CDC"), or the Food and Drug
Administration ("FDA"), hereinafter singly or collectively
referred to as ("PHS"), agencies of the United States Public
Health Service within the Department of Health and Human
Services ("DHHS"); and
2) The person, corporation, or institution identified above
and/or on the Signature Page, having offices at the address
indicated on the Signature Page (hereinafter referred to as
("LICENSEE").
Zonagen/PHS Exclusive Patent License L-354-98/0
April 5, 1999 - Final Page 1 of 22
{PAGE}
PHS PATENT LICENSE AGREEMENT-EXCLUSIVE
PHS and LICENSEE agree as follows:
1. BACKGROUND
1.01 In the course of conducting biomedical and behavioral
research, PHS investigators and investigators at the Southwest
Foundation for Biomedical Research ("SFBR") made inventions
that may have commercial applicability.
1.02 By assignment of rights from PHS employees, DHHS, on behalf of
the United States Government, owns intellectual property
rights claimed in any United States and/or foreign patent
applications or patents corresponding to the assigned
inventions. DHHS also owns any tangible embodiments of these
inventions actually reduced to practice by PHS.
1.03 The Secretary of DHHS has delegated to PHS the authority to
enter into this AGREEMENT for the licensing of rights to these
inventions.
1.04 PHS and SFBR, entered into an Inter-institutional Agreement
May 1, 1998 whereby SFBR granted PHS an exclusive license
including the right to grant sublicenses, under U.S. Patent
Application 60/016,628 and any divisions or continuations
thereof, all foreign counterpart applications, and any U.S.
and foreign patents issued thereon or reissues or extensions
thereof.
1.05 PHS desires to transfer these inventions to the private sector
through commercialization licenses to facilitate the
commercial development of products and processes for public
use and benefit.
1.06 LICENSEE has represented to PHS, to induce PHS to enter this
AGREEMENT, that LICENSEE has or shall acquire the necessary
research, development, manufacturing, distribution, marketing
and sales capabilities and expertise and will use its
reasonable best efforts to develop and commercialize LICENSED
PRODUCT(S) and LICENSED PROCESS(ES) in the LICENSED
FIELDS-OF-USE in the LICENSED TERRITORY for public use and
benefit.
2. DEFINITIONS
2.01 "BENCHMARKS" shall mean the performance milestones that are
set forth in Appendix E.
2.02 "COMMERCIAL DEVELOPMENT PLAN" shall mean the written
commercialization plan attached as Appendix F.
2.03 "FIRST COMMERCIAL SALE" shall mean the initial transfer by or
on behalf of LICENSEE, its AFFILIATES or its SUBLICENSEES of
LICENSED PRODUCTS or the initial practice of a LICENSED
PROCESS by or on behalf of LICENSEE, its AFFILIATES, or its
SUBLICENSEES in exchange for cash or some equivalent to which
value can be assigned for the purpose of determining NET
SALES.
2.04 "GOVERNMENT" means the GOVERNMENT of the United States of
America.
2.05 "LICENSED FIELDS-OF-USE" means the fields of use identified in
Appendix B.
2.06 "LICENSED PATENT RIGHTS" shall mean:
a) Patent applications (including provisional patent
applications and Patent Cooperation Treaty (PCT)
patent applications) and/or patents listed in
Appendix A, all divisions and continuations of these
applications, all patents issuing from such
applications, divisions, and continuations, and any
reissues, reexaminations, and extensions of all such
patents;
Zonagen/PHS Exclusive Patent License L-354-98/0
April 5, 1999 - Final Page 2 of 22
237409
|
Zonagen
As referenced in this Patent License Agreement--Exclusive:
Zonagen, – Blye (NICHD) and Drs. Pemmaraju Narasinha
Rao, James W. Cessac, and Carmie Kirk Acosta, all of Southwest
Foundation for Biomedical Research (SFBR).
LICENSEE: Zonagen, Inc., a Delaware corporation, having its principal
office at 2408 Timberloch Place, Suite B-4, The Woodlands, Texas 77380.
Cooperative Research and
_____________
Zonagen/ – identified above
and/or on the Signature Page, having offices at the address
indicated on the Signature Page (hereinafter referred to as
("LICENSEE").
Zonagen/ PHS Exclusive Patent License L-354-98/0
April 5, 1999 - Final Page 1 of 22
{PAGE}
PHS PATENT LICENSE AGREEMENT-EXCLUSIVE
PHS
_____________
Zonagen/ – continuations of these
applications, all patents issuing from such
applications, divisions, and continuations, and any
reissues, reexaminations, and extensions of all such
patents;
Zonagen/ PHS Exclusive Patent License L-354-98/0
April 5, 1999 - Final Page 2 of 22
{PAGE}
b) To the extent that the
_____________
Zonagen/ – under the LICENSED PATENT RIGHTS for purposes of
research and not for purposes of commercial manufacture or
distribution or in lieu of purchase.
Zonagen/ PHS Exclusive Patent License L-354-98/0
April 5, 1999 - Final Page 3 of 22
{PAGE}
2.14 "VALID CLAIM" shall mean
_____________
Zonagen/ – U.S.C. 3710a(b)(1)(A),
a nonexclusive, nontransferable, irrevocable, paid-up
license to practice LICENSED PATENT RIGHTS or have
LICENSED PATENT
Zonagen/ PHS Exclusive Patent License L-354-98/0
April 5, 1999 - Final Page 4 of 22
{PAGE}
RIGHTS practiced throughout the world by
_____________
dt 134964
| |
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Exclusive Patent License Agreement (43K)
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EXCLUSIVE PATENT LICENSE AGREEMENT
NUTRACEUTIX, INC.
AND
ARCHER-DANIELS-MIDLAND COMPANY
1
{PAGE}
TABLE OF CONTENTS
PREAMBLE
1. Definitions
2. Grant of License
3. Consideration
4. Infringement
5. Limited Warranty and Indemnification
6. Term and Termination
7. Reasonable efforts
8. Packaging, Labels and Promotional Items
9. Protection of Proprietary Rights
10. Assignment
11. Disputes; Arbitration
12. Governing Law
13. Force Majeure
14. Notices
15. Miscellaneous
2
{PAGE}
EXCLUSIVE PATENT LICENSE AGREEMENT
THIS AGREEMENT ("Agreement") made as of the 8th day of March, 2002 by and
between Nutraceutix, Inc., a Delaware corporation (hereinafter referred to as
"Nutraceutix") and Archer-Daniels-Midland Company, a Delaware corporation
(hereinafter referred to as "ADM").
WITNESSETH:
WHEREAS, Nutraceutix holds an exclusive license to certain patents and
patent applications and is the owner of certain patents and patent applications
in the United States and in other countries in the world relating to controlled
delivery technology;
WHEREAS, ADM desires that Nutraceutix grant ADM a license in the Territory
(as defined below) to manufacture, use, sell and offer to sell the Licensed
Products (as defined below) in the Licensed Field of Use (as defined below)
pursuant to the terms and conditions set forth in this Agreement; and
NOW, THEREFORE, in consideration of the premises and the mutual agreements
contained herein, and intending to be legally bound hereby, the Parties agree
as follows:
ARTICLE 1. DEFINITIONS
For the purposes of this Agreement, unless the context clearly or necessarily
requires otherwise, the following terms shall have the meanings set forth below:
1.1 "Parties" shall mean both Nutraceutix and ADM, and the "Party" shall mean
either of them.
1.2 "Affiliate" of a Party shall mean any company, corporation, partnership,
syndicate or other entity that, directly or indirectly, through one or more
intermediaries, controls, is controlled by, or is under common control with,
such Party. "Control" shall mean ownership of fifty-one percent (51%) or more
of the voting rights or equity in the specified entity.
1.3 "Contract Year" shall mean any of the following occurring during the term
hereof: (i) the period that begins on the Effective Date and ends on the
following December 31; (ii) any calender year thereafter; or (iii) the period
that ends on the date on which this Agreement expires or terminates and that
begins on the prior January 1. Provided, however, if this Agreement expires or
terminates on January 1, the Contract Year referred to in (ii) above shall be
one day in length.
1.4 "Contract Quarter" shall mean any of the following occurring during the
term hereof: (i) the period that begins on the Effective Date and ends on the
first to occur of the following; March 31, June 30, September 30, or December
31; (ii) any calender quarter thereafter; or (iii) the period that ends on the
date on which this Agreement expires or terminates and that begins with the
last to occur prior thereto of the preceding January 1, April 1, July 1 or
October 1. Provided, however, that if this Agreement expires or
3
{PAGE}
terminates on the first day of a calendar quarter, the Contract Quarter
referred to in (iii) above shall be one day in length.
1.5 "Effective Date" shall mean the date when this agreement is fully executed
by the Parties.
1.6 "Intellectual Property" shall mean all forms of intellectual property
existing on or after the date of this Agreement under the laws of any state
or country including, but not limited to, patentable inventions, patentable
designs, patentable plants, copyrightable works, mask works, novel plan
varieties, trademarks, service marks, trade secrets, and trade dress.
1.7 "Inventions" shall mean any discovery, concept, trade secret, art, clinical
data, idea or other information, whether or not patentable, that relates to
or arises out of the subject matters disclosed in the Licensed Patents, as
well as any foreign patents or foreign patent applications corresponding
thereto, and any continuations, continuations-in-part, divisionals,
reissues, reexaminations, extensions or additions thereof for use in the
Licensed Field of Use.
1.8 "Exclusive Licensed Field of Use" shall mean any legal use of the
Inventions and/or Licensed Products constituting one of the following
nutraceuticals and/or dietary supplements: (i) phytoestrogens, including
but not limited to isoflavones; (ii) vitamin C and its derivatives (subject
to cancellation pursuant to Section 3.1(b)); and (iii) such other
nutraceuticals and dietary supplements that become the subject of this
License as a result of ADM exercising its right of refusal set forth in
Section 2.3.
1.9 "Non-Exclusive Licensed Field of Use" shall mean any legal use of the
Inventions and/or Licensed Products constituting one of the following
nutraceuticals and/or dietary supplements: (i) glucosamine; and (ii)
glucosamine and chondroitin.
1.10 "Licensed Patents" shall mean United States Patent Number 6,090,411 and
pending United States Patent Application Number 60/339,887, as well as
rights to any foreign patents or foreign patent applications corresponding
thereto, any continuations, continuations-in-part, divisionals, reissues,
reexaminations, extensions or additions thereof.
1.11 "Licensed Products" shall mean any product or part thereof in the Licensed
Field of Use, the manufacture, use, sale, offer for sale, or importation of
which is covered by one or more valid claims of the issued, unexpired
Licensed Patents. A claim of the issued, unexpired Licensed Patents shall
be presumed to be valid unless and until it has been held to be invalid by
a final judgment of a court of competent jurisdiction from which no appeal
can be or is taken.
1.12 "Net Sales" shall mean ADM's invoiced sales price billed to third parties
for Licensed Products, and received, less (a) credits, allowances,
discounts and rebates to, and charge backs from the account of, such
customers for spoiled, damaged, out-dated, rejected or returned Licensed
Products; (b) (to the extent included in the invoiced sales price) actual
freight and insurance costs incurred in transporting such product in final
form to such customers; (c) cash, quantity and promotional discounts, to
the extent the same reduce the
4
{PAGE}
invoiced sales price at issue; and (d) sale, use, value-added and other
taxes or governmental charges incurred in connection with the exportation
or importation of such Licensed Products in final form.
1.13 "Territory" shall mean worldwide.
ARTICLE 2. GRANT OF LICENSE
2.1 Nutraceutix Licensed Patents.
For the term of this Agreement and subject to the terms and conditions
hereof, Nutraceutix hereby grants to ADM (i) the sole and exclusive right
and license, with the right to sublicense, to manufacture, have
manufactured on its behalf, use, sell and offer to sell the Licensed
Products and the Inventions in the Territory for the Exclusive Licensed
Field of Use; and (ii) the non-exclusive right and license, with the right
to sublicense, to manufacture, have manufactured on its behalf, use, sell
and offer to sell the Licensed Products and the Inventions in the
Territory for the Non-exclusive Licensed Field of Use. Nutraceutix shall
not grant other licenses under the Licensed Patents in the Territory for
326570
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ADM
As referenced in this Exclusive Patent License Agreement:
ARCHER-DANIELS-MIDLAND – 10.15
{SEQUENCE}3
{FILENAME}v88046exv10w15.txt
{DESCRIPTION}EXHIBIT 10.15
{TEXT}
{PAGE}
EXHIBIT 10.15
EXCLUSIVE PATENT LICENSE AGREEMENT
NUTRACEUTIX, INC.
AND
ARCHER-DANIELS-MIDLAND COMPANY
1
{PAGE}
TABLE OF CONTENTS
PREAMBLE
1. Definitions
2. Grant of License
3. Consideration
4. Infringement
5. Limited Warranty and Indemnification
6.
_____________
Archer-Daniels-Midland – made as of the 8th day of March, 2002 by and
between Nutraceutix, Inc., a Delaware corporation (hereinafter referred to as
"Nutraceutix") and Archer-Daniels-Midland Company, a Delaware corporation
(hereinafter referred to as "ADM").
WITNESSETH:
WHEREAS, Nutraceutix holds an exclusive license to certain patents and
patent applications and
_____________
Archer-Daniels-Midland – Nutraceutix, Inc.
8340 154th Ave. N.E.
Redmond, WA 98052
Attn: David Howard
Telephone: 425-883-9518
Facsimile: 425-869-1020
To ADM: Archer-Daniels-Midland Company
4666 Faries Parkway
Decatur, Illinois 62526
Attn: President, ADM Natural Health & Nutrition
Telephone: 217-451-4019
Facsimile: 217-362-8166
With copy
_____________
Archer-Daniels-Midland – 4666 Faries Parkway
Decatur, Illinois 62526
Attn: President, ADM Natural Health & Nutrition
Telephone: 217-451-4019
Facsimile: 217-362-8166
With copy to: Archer-Daniels-Midland Company
4666 Faries Parkway
Decatur, Illinois 62526
Attn: General Counsel
Telephone: 217-424-5200
Facsimile: 217-451-6196
Either Party may change the
_____________
ARCHER DANIELS MIDLAND – and year
above written.
NUTRACEUTIX, INC.
/s/ David G. Howard
By:________________________
Name: President & CEO
______________________
Title: ____________________
Date: 3-25-2002
_____________________
ARCHER DANIELS MIDLAND COMPANY
/s/ Anthony P. DeLio
By: _________________________________________
Anthony P. DeLio
Name: _______________________________________
President, Natural Health & Nutrition
Title: ______________________________________
3-25-02
Date: ______________________
_____________
dt 705411
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PUBLIC HEALTH SERVICE
PHS PATENT LICENSE AGREEMENT--EXCLUSIVE
COVER PAGE
For PHS internal use only:
Patent License Number: L-354-98/0, which relates to OTT Reference
Number E-016-96/0.
Serial Numbers of Patent Applications: 60/016,628, filed May 1, 1996,
entitled "21-substituted Progesterone Derivatives as New
Anti-Progestational Agents." Inventors for this application: Drs. Hyun
K. Kim (NICHD), Richard P. Blye (NICHD) and Drs. Pemmaraju Narasinha
Rao, James W. Cessac, and Carmie Kirk Acosta, all of Southwest
Foundation for Biomedical Research (SFBR).
LICENSEE: Zonagen, Inc., a Delaware corporation, having its principal
office at 2408 Timberloch Place, Suite B-4, The Woodlands, Texas 77380.
Cooperative Research and Development Agreement (CRADA) Number: None.
Additional Remarks: The terms of this AGREEMENT shall be considered
CONFIDENTIAL.
Public Benefit(s): The principal benefit of this invention is its
potential to treat diseases of hormonal or endocrine tissues.
This exclusive patent license agreement (hereinafter referred to as the
("AGREEMENT"), made effective the first date upon which all the Parties have
subscribed their signatures hereunto ("EFFECTIVE DATE"), consists of this Cover
Page, an attached AGREEMENT, a Signature Page, Appendix A (List of Patent(s)
and/or Patent Application(s)), Appendix B (LICENSED FIELDS-OF-USE and LICENSED
TERRITORY), Appendix C (Royalties), Appendix D (Modifications), Appendix E
(BENCHMARKS), and Appendix F (COMMERCIAL DEVELOPMENT PLAN). The Parties to this
AGREEMENT are:
1) The National Institutes of Health ("NIH"), the Centers for
Disease Control and Prevention ("CDC"), or the Food and Drug
Administration ("FDA"), hereinafter singly or collectively
referred to as ("PHS"), agencies of the United States Public
Health Service within the Department of Health and Human
Services ("DHHS"); and
2) The person, corporation, or institution identified above
and/or on the Signature Page, having offices at the address
indicated on the Signature Page (hereinafter referred to as
("LICENSEE").
Zonagen/PHS Exclusive Patent License L-354-98/0
April 5, 1999 - Final Page 1 of 22
{PAGE}
PHS PATENT LICENSE AGREEMENT-EXCLUSIVE
PHS and LICENSEE agree as follows:
1. BACKGROUND
1.01 In the course of conducting biomedical and behavioral
research, PHS investigators and investigators at the Southwest
Foundation for Biomedical Research ("SFBR") made inventions
that may have commercial applicability.
1.02 By assignment of rights from PHS employees, DHHS, on behalf of
the United States Government, owns intellectual property
rights claimed in any United States and/or foreign patent
applications or patents corresponding to the assigned
inventions. DHHS also owns any tangible embodiments of these
inventions actually reduced to practice by PHS.
1.03 The Secretary of DHHS has delegated to PHS the authority to
enter into this AGREEMENT for the licensing of rights to these
inventions.
1.04 PHS and SFBR, entered into an Inter-institutional Agreement
May 1, 1998 whereby SFBR granted PHS an exclusive license
including the right to grant sublicenses, under U.S. Patent
Application 60/016,628 and any divisions or continuations
thereof, all foreign counterpart applications, and any U.S.
and foreign patents issued thereon or reissues or extensions
thereof.
1.05 PHS desires to transfer these inventions to the private sector
through commercialization licenses to facilitate the
commercial development of products and processes for public
use and benefit.
1.06 LICENSEE has represented to PHS, to induce PHS to enter this
AGREEMENT, that LICENSEE has or shall acquire the necessary
research, development, manufacturing, distribution, marketing
and sales capabilities and expertise and will use its
reasonable best efforts to develop and commercialize LICENSED
PRODUCT(S) and LICENSED PROCESS(ES) in the LICENSED
FIELDS-OF-USE in the LICENSED TERRITORY for public use and
benefit.
2. DEFINITIONS
2.01 "BENCHMARKS" shall mean the performance milestones that are
set forth in Appendix E.
2.02 "COMMERCIAL DEVELOPMENT PLAN" shall mean the written
commercialization plan attached as Appendix F.
2.03 "FIRST COMMERCIAL SALE" shall mean the initial transfer by or
on behalf of LICENSEE, its AFFILIATES or its SUBLICENSEES of
LICENSED PRODUCTS or the initial practice of a LICENSED
PROCESS by or on behalf of LICENSEE, its AFFILIATES, or its
SUBLICENSEES in exchange for cash or some equivalent to which
value can be assigned for the purpose of determining NET
SALES.
2.04 "GOVERNMENT" means the GOVERNMENT of the United States of
America.
2.05 "LICENSED FIELDS-OF-USE" means the fields of use identified in
Appendix B.
2.06 "LICENSED PATENT RIGHTS" shall mean:
a) Patent applications (including provisional patent
applications and Patent Cooperation Treaty (PCT)
patent applications) and/or patents listed in
Appendix A, all divisions and continuations of these
applications, all patents issuing from such
applications, divisions, and continuations, and any
reissues, reexaminations, and extensions of all such
patents;
Zonagen/PHS Exclusive Patent License L-354-98/0
April 5, 1999 - Final Page 2 of 22
{PAGE}
b) To the extent that the following contain one or more
claims directed to the invention or inventions
disclosed in a) above: i) continuations-in-part of a)
above; ii) all divisions and continuations of these
continuations-in-part; iii) all patents issuing from
such continuations-in-part, divisions, and
continuations; iv) priority patent application(s) of
a) above; and v) any reissues, reexaminations, and
extensions of all such patents;
c) To the extent that the following contain one or more
claims directed to the invention or inventions
disclosed in a) above: all counterpart foreign and
U.S. patent applications and patents to a) and b)
above, including those listed in Appendix A.
LICENSED PATENT RIGHTS shall not include b) or c) above to the
extent that they contain one or more claims directed to new
matter which is not the subject matter disclosed in a) above.
2.07 "LICENSED PROCESS(ES)" shall mean processes which, in the
course of being practiced would, in the absence of this
AGREEMENT, infringe one or more claims of the LICENSED PATENT
RIGHTS that have not been held invalid or unenforceable by an
unappealed or unappealable judgment of a court of competent
jurisdiction.
2.08 "LICENSED PRODUCT(S)" shall mean tangible materials which, in
the course of manufacture, use, offer to sell, sale, or
importation would, in the absence of this AGREEMENT, infringe
one or more claims of the LICENSED PATENT RIGHTS that have not
been held invalid or unenforceable by an unappealed or
unappealable judgment of a court of competent jurisdiction.
2.09 "LICENSED TERRITORY" shall mean the geographical area
identified in Appendix B.
2.10 "NET SALES" for the purposes of computing the full royalty
contemplated under the provisions of Article 6 below, shall
mean the total gross receipts for sales of LICENSED PRODUCTS
or practice of LICENSED PROCESSES by or on behalf of LICENSEE,
its AFFILIATES and its SUBLICENSEES, and from leasing,
renting, or otherwise making LICENSED PRODUCTS available to
others without sale or other dispositions, whether invoiced or
not, less returns and allowances, packing costs, insurance
costs, freight out, taxes or excise duties imposed on the
transaction (if separately invoiced), and wholesaler and cash
discounts in amounts customary in the trade to the extent
actually granted. No deductions shall be made for commissions
paid to individuals, whether they shall be with independent
sales agencies or regularly employed by LICENSEE, its
AFFILIATES, or its SUBLICENSEES and on its payroll, or for the
cost of collections. It is the Parties' intention in all
transactions involving LICENSED PRODUCT(S) and/or LICENSED
PROCESS(ES), that PHS shall receive a royalty not less than
that which would have been generated in an arm's length
transaction.
2.11 "AFFILIATES" shall mean any company or other legal entity,
other than LICENSEE, in whatever country organized, controlled
by, controlling, or under common control with LICENSEE. The
term "control" shall mean possession, direct or indirect, of
the powers to direct or cause the direction of the management
and policies of an entity, whether through the ownership of
voting securities, by contract, or otherwise, and the term
"entity" includes an individual, corporation or other entity.
2.12 "PRACTICAL APPLICATION" shall mean to manufacture in the case
of a composition or product, to practice in the case of a
process or method, or to operate in the case of a machine or
system; and in each case, under such conditions as to
establish that the invention is being utilized and that its
benefits are to the extent permitted by law or GOVERNMENT
regulations available to the public on reasonable terms.
2.13 "RESEARCH LICENSE" shall mean a nontransferable, nonexclusive
license to make and to use the LICENSED PRODUCTS or LICENSED
PROCESSES under the LICENSED PATENT RIGHTS for purposes of
research and not for purposes of commercial manufacture or
distribution or in lieu of purchase.
Zonagen/PHS Exclusive Patent License L-354-98/0
April 5, 1999 - Final Page 3 of 22
{PAGE}
2.14 "VALID CLAIM" shall mean the claim of a patent or pending
patent application which has not been held invalid or
otherwise unenforceable by a court of competent jurisdiction
from which no further appeal has or can be taken, or has not
otherwise finally been held unpatentable by the appropriate
administrative agency.
2.15 "SUBLICENSEE" shall mean any third party who is not an
AFFILIATE and who is licensed by LICENSEE to manufacture or
sell any LICENSED PRODUCT.
3. GRANT OF RIGHTS
3.01 PHS hereby grants and LICENSEE accepts, subject to the terms
and conditions of this AGREEMENT, an exclusive license under
the LICENSED PATENT RIGHTS in the LICENSED TERRITORY to make
and have made, to use and have used, to sell and have sold, to
offer to sell, and to import any LICENSED PRODUCTS in the
LICENSED FIELDS-OF-USE and to practice and have practiced any
LICENSED PROCESSES in the LICENSED FIELDS-OF-USE.
3.02 This AGREEMENT confers no license or rights by implication,
estoppel, or otherwise under any patent applications or
patents of PHS other than LICENSED PATENT RIGHTS regardless of
whether such patents are dominant or subordinate to LICENSED
PATENT RIGHTS. The Office of Technology Transfer is unaware of
any such patents.
4. SUBLICENSING
4.01 Upon written approval by PHS, which approval will not be
unreasonably withheld, LICENSEE may enter into sublicensing
agreements under the LICENSED PATENT RIGHTS.
4.02 LICENSEE agrees that any sublicenses granted by it shall
provide that the obligations to PHS of Paragraphs 5.01-5.04,
8.01, 10.01, 10.02, 12.05, and 13.07-13.09 of this AGREEMENT
shall be binding upon the SUBLICENSEE as if it were a party to
this AGREEMENT. LICENSEE further agrees to attach copies of
these Paragraphs to all such sublicense agreements.
4.03 Any sublicenses granted by LICENSEE shall provide for the
termination of the sublicense, or the conversion to a license
directly between such SUBLICENSEES and PHS, at the option of
the SUBLICENSEE, upon termination of this AGREEMENT under
Article 13. Such conversion is subject to PHS approval and
contingent upon acceptance by the SUBLICENSEE of the remaining
provisions of this AGREEMENT.
4.04 LICENSEE shall forward to PHS a copy of each fully executed
sublicense agreement postmarked within thirty (30) days of the
execution of such agreement. To the extent permitted by law,
PHS agrees to maintain each such sublicense agreement in
confidence.
5. STATUTORY AND PHS REQUIREMENTS AND RESERVED GOVERNMENT RIGHTS
5.01 (a) PHS reserves on behalf of the GOVERNMENT an
irrevocable, nonexclusive, nontransferable,
royalty-free license for the practice of all
inventions licensed under the LICENSED PATENT RIGHTS
throughout the world by or on behalf of the
GOVERNMENT and on behalf of any foreign government or
international organization pursuant to any existing
or future treaty or agreement to which the GOVERNMENT
is a signatory. Upon request by PHS, LICENSEE agrees
to provide PHS reasonable quantities of LICENSED
PRODUCTS or materials made through the LICENSED
PROCESSES for PHS research use.
(b) In the event that LICENSED PATENT RIGHTS are Subject
Inventions made under a Cooperative Research and
Development Agreement ("CRADA"), LICENSEE grants to
the Government, pursuant to 15 U.S.C. 3710a(b)(1)(A),
a nonexclusive, nontransferable, irrevocable, paid-up
license to practice LICENSED PATENT RIGHTS or have
LICENSED PATENT
Zonagen/PHS Exclusive Patent License L-354-98/0
April 5, 1999 - Final Page 4 of 22
{PAGE}
RIGHTS practiced throughout the world by or on behalf
of the GOVERNMENT. In the exercise of such license,
the GOVERNMENT shall not publicly disclose trade
secrets or commercial or financial information that
is privileged or confidential within the meaning of 5
U.S.C. 552(b)(4) or which would be considered as such
if it had been obtained from a non-Federal party.
Prior to the FIRST COMMERCIAL SALE, LICENSEE agrees
to provide PHS reasonable quantities of LICENSED
PRODUCTS or materials made through the LICENSED
PROCESSES for PHS research use.
5.02 LICENSEE agrees that products used or sold in the United
States embodying LICENSED PRODUCTS or produced through use of
LICENSED PROCESSES shall be manufactured substantially in the
United States, unless a written waiver is obtained in advance
from PHS. PHS does not represent that such a waiver shall be
granted.
5.03 LICENSEE acknowledges that PHS may enter into future CRADAs
under the Federal Technology Transfer Act of 1986 that relate
to the subject matter of this AGREEMENT. LICENSEE shall not
unreasonably deny requests for a grant of a RESEARCH LICENSE
from such future collaborators with PHS when acquiring such
rights is necessary to make such a CRADA project feasible.
LICENSEE may request an opportunity to join as a party to the
proposed CRADA.
5.04 (a) In addition to the reserved license of Paragraph 5.01
above, PHS reserves the right to grant nonexclusive
RESEARCH LICENSEs directly or to require LICENSEE to
grant nonexclusive RESEARCH LICENSEs on reasonable
terms. The purpose of any such RESEARCH LICENSE shall
be to encourage basic research, whether conducted at
an academic or corporate facility. In order to
safeguard the LICENSED PATENT RIGHTS, however, PHS
shall consult with LICENSEE and reasonably consider
LICENSEE's views before making a decision to grant to
commercial entities a RESEARCH LICENSE or providing
to them research samples of materials made through
the LICENSED PROCESSES.
(b) In exceptional circumstances, and in the event that
Licensed Patent Rights are Subject Inventions made
under a CRADA, the GOVERNMENT, pursuant to 15 U.S.C.
3710a(b)(1)(B), retains the right to require the
LICENSEE to grant to a responsible applicant a
nonexclusive, partially exclusive, or exclusive
sublicense to use LICENSED PATENT RIGHTS in
LICENSEE's field-of-use on terms that are reasonable
under the circumstances; or if LICENSEE fails to
grant such a license, the GOVERNMENT retains the
right to grant the license itself. The exercise of
such rights by the GOVERNMENT shall only be in
exceptional circumstances and only if the GOVERNMENT
determines (i) the action is necessary to meet health
or safety needs that are not reasonably satisfied by
LICENSEE; (ii) the action is necessary to meet
requirements for public use specified by Federal
regulations, and such requirements are not reasonably
satisfied by the LICENSEE; or (iii) the LICENSEE has
failed to comply with an agreement containing
provisions described in 15 U.S.C. 3710a(c)(4)(B). The
determination made by the GOVERNMENT under this
Article is subject to administrative appeal and
judicial review under 35 U.S.C. 203(2).
6. ROYALTIES AND REIMBURSEMENT
6.01 LICENSEE shall pay PHS a noncreditable, nonrefundable license
issue royalty as set forth in Appendix C.
6.02 LICENSEE shall pay PHS noncreditable, nonrefundable patent
reimbursement royalty as set forth in Appendix C.
6.03 LICENSEE shall pay PHS annual earned royalties as set forth in
Appendix C.
6.04 LICENSEE shall pay PHS Benchmark royalties as set forth in
Appendix C.
Zonagen/PHS Exclusive Patent License L-354-98/0
April 5, 1999 - Final Page 5 of 22
{PAGE}
6.05 LICENSEE shall pay PHS sublicensing royalties as set forth in
Appendix C.
6.06 For the purpose of capturing the full value of the license
granted herein and for ease of calculating royalties earned
and due PHS, LICENSEE agrees to pay adjusted annual earned
royalties on its NET SALES in countries in which a VALID CLAIM
does not exist. Adjusted royalties payable to PHS under such
circumstances are set forth in Appendix C.
6.07 No multiple royalties shall be payable because any LICENSED
PRODUCTS or LICENSED PROCESSES are covered by more than one
patents or patent applications under the LICENSED PATENT
RIGHTS.
6.08 On sales of LICENSED PRODUCTS by LICENSEE made in other than
an arm's-length transaction, the value of the NET SALES for
the purpose of calculating royalties owed and due under this
Article 6 shall be that which would have been received in an
arm's-length transaction, based on sales of like quantity and
quality products on or about the time of such transaction.
6.09 PHS, at its sole option, may require LICENSEE to pay patent
expenses directly to the law firm employed by PHS to file,
prosecute and maintain patents and patent applications under
the LICENSED PATENT RIGHTS. In such an event, PHS and not
LICENSEE shall be the client of such law firm.
6.10 In limited circumstances, LICENSEE may be given the right to
assume responsibility for the preparation, filing,
prosecution, or maintenance of any patent application or
patent included with the LICENSED PATENT RIGHTS. In that
event, LICENSEE shall directly pay the attorneys or agents
engaged to prepare, file, prosecute, or maintain such patent
applications or patents and shall provide to PHS copies of
each invoice associated with such services as well as
documentation that such invoices have been paid.
6.11 LICENSEE, as provided for under Paragraph 13.04, may elect to
terminate this AGREEMENT or its license rights in any country
in the LICENSED TERRITORY. In such an event, on a country by
country basis, LICENSEE shall have no obligation to pay PHS a
patent reimbursement royalty or patent expenses incurred by
PHS after expiration of the sixty (60) day written notice
period required under Paragraph 13.04.
7. PATENT FILING, PROSECUTION, AND MAINTENANCE
7.01 Except as otherwise provided in this Article 7, PHS agrees to
take responsibility for, but to consult with, the LICENSEE in
the preparation, filing, prosecution, and maintenance of any
and all patent applications or patents included in the
LICENSED PATENT RIGHTS and shall furnish copies of relevant
patent-related documents to LICENSEE.
7.02 Upon PHS's written request, LICENSEE shall assume the
responsibility for the preparation, filing, prosecution, and
maintenance of any and all patent applications or patents
included in the LICENSED PATENT RIGHTS and shall on an ongoing
basis promptly furnish copies of all patent-related documents
to PHS. In such event, LICENSEE shall, subject to the prior
approval of PHS, select registered patent attorneys or patent
agents to provide such services on behalf of LICENSEE and PHS.
PHS shall provide appropriate powers of attorney and other
documents necessary to undertake such actions to the patent
attorneys or patent agents providing such services. LICENSEE
and its attorneys or agents shall consult with PHS in all
aspects of the preparation, filing, prosecution and
maintenance of patent applications and patents included within
the LICENSED PATENT RIGHTS and shall provide PHS sufficient
opportunity to comment on any document that LICENSEE intends
to file or to cause to be filed with the relevant intellectual
property or patent office.
7.03 At any time, PHS may provide LICENSEE with written notice that
PHS wishes to assume control of the preparation, filing,
prosecution, and maintenance of any and all patent
applications or patents
Zonagen/PHS Exclusive Patent License L-354-98/0
April 5, 1999 - Final Page 6 of 22
{PAGE}
included in the LICENSED PATENT RIGHTS. If PHS elects to
assume such responsibilities, LICENSEE shall cooperate fully
with PHS, its attorneys, and agents in the preparation,
filing, prosecution, and maintenance of any and all patent
applications or patents included in the LICENSED PATENT RIGHTS
and provide PHS with complete copies of any and all documents
or other materials that PHS deems necessary to undertake such
responsibilities. LICENSEE shall be responsible for all costs
associated with transferring patent prosecution
responsibilities to an attorney or agent of PHS's choice.
7.04 Each Party shall promptly inform the other as to all matters
that come to its attention that may affect the preparation,
filing, prosecution, or maintenance of the LICENSED PATENT
RIGHTS and permit each other to provide comments and
suggestions with respect to the preparation, filing,
prosecution, and maintenance of LICENSED PATENT RIGHTS, which
comments and suggestions shall be considered by the other
Party.
8. RECORD KEEPING
8.01 LICENSEE shall keep full, true and accurate books of accounts
and records, including work papers, containing particulars
that may be necessary for the purposes of showing the amounts
payable to PHS hereunder. Such books of account and records,
including working papers, shall be kept at LICENSEE's
principal place of business of the appropriate division of
LICENSEE to which this AGREEMENT relates, for a period of at
least five (5) years following the calendar year to which they
pertain, to the inspection of PHS or its agents, during normal
working hours, for the purpose of verifying the accuracy and
completeness of LICENSEE's royalty statement and/or compliance
in other aspects with this AGREEMENT. The full cost of any
such audit shall be borne by LICENSEE in the event that the
sum of royalties, fees and any other amounts actually reported
by LICENSEE for any twelve (12) month period are underreported
by more than five percent (5 % ) of the sum of royalties, fees
and other amounts determined payable by such audit. LICENSEE
shall pay the full cost of any such audit and all
underreported and/or unpaid amounts earned and due discovered
by such audit, including any late charges as required by
Paragraph 9.08 hereinbelow, within thirty (30) days of the
date PHS provides LICENSEE with written notice of the amounts
earned and due. PHS auditors or its designated independent
auditors shall only disclose to PHS information relating to
the accuracy of reports and underreporting and/or underpayment
of royalties, fees and any other amounts earned and due under
this AGREEMENT. PHS agrees to provide LICENSEE with at least
ten (10) days notice of an audit under this Paragraph 8.01.
PHS or its agents shall audit LICENSEE no more often than once
in any twelve month period.
8.02 LICENSEE shall instruct its independent auditors to conduct an
annual royalty audit each calendar year for the term of this
AGREEMENT and to report their findings to PHS within thirty
(30) days of completing each such annual royalty audit. This
annual royalty audit shall include, on a country by country,
LICENSED PRODUCT by LICENSED PRODUCT basis, gross sales,
adjustments made to gross sales figures to determine NET
SALES, NET SALES, calculations applied to NET SALES figures to
determine earned royalties due PHS, earned royalties owed and
due PHS, and any other royalties earned and due PHS under this
AGREEMENT for the period audited. Such audit shall also
include a listing of gross sales, NET SALES and royalties
attributed to LICENSEE, each Affiliate and each SUBLICENSEE,
individually.
9. REPORTS ON PROGRESS, BENCHMARKS, SALES, AND PAYMENTS
9.01 Prior to signing this AGREEMENT, LICENSEE has provided to PHS
the COMMERCIAL DEVELOPMENT PLAN at Appendix F, under which
LICENSEE intends to bring the subject matter of the LICENSED
PATENT RIGHTS to the point of PRACTICAL APPLICATION. This
COMMERCIAL DEVELOPMENT PLAN is hereby incorporated by
reference into this AGREEMENT. Based on this plan, performance
BENCHMARKS are determined as specified in Appendix E.
9.02 LICENSEE shall provide written annual reports on its product
development progress or efforts to commercialize under the
COMMERCIAL DEVELOPMENT PLAN for each of the LICENSED
FIELDS-OF-USE
Zonagen/PHS Exclusive Patent License L-354-98/0
April 5, 1999 - Final Page 7 of 22
{PAGE}
within sixty (60) days after December 31 of each calendar
year. These progress reports shall include, but not be limited
to: progress on research and development, status of
applications for regulatory approvals, manufacturing,
sublicensing, marketing, importing, and sales during the
preceding calendar year, as well as plans for the present
calendar year. PHS also encourages these reports to include
information on any of LICENSEE's public service activities
that relate to the LICENSED PATENT RIGHTS. If reported
progress differs from that projected in the COMMERCIAL
DEVELOPMENT PLAN and BENCHMARKS, LICENSEE shall explain the
reasons for such differences. In any such annual report,
LICENSEE may propose amendments to the COMMERCIAL DEVELOPMENT
PLAN, acceptance of which by PHS may not be denied
unreasonably. LICENSEE agrees to provide any additional
information reasonably required by PHS to evaluate LICENSEE's
performance under this AGREEMENT. LICENSEE may amend the
BENCHMARKS at any time upon written consent by PHS. PHS shall
not unreasonably withhold approval of any request of LICENSEE
to extend the time periods of this schedule if such request is
supported by a reasonable showing by LICENSEE of diligence in
its performance under the COMMERCIAL DEVELOPMENT PLAN and
toward bringing the LICENSED PRODUCTS to the point of
PRACTICAL APPLICATION as defined in 37 CFR 404.3(d). LICENSEE
shall amend the COMMERCIAL DEVELOPMENT PLAN and BENCHMARKS at
the request of PHS to address any LICENSED FIELDS-OF-USE not
specifically addressed in the plan originally submitted.
9.03 LICENSEE shall report to PHS the dates for achieving
BENCHMARKS specified in Appendix E and the FIRST COMMERCIAL
SALE in each country in the LICENSED TERRITORY within sixty
(60) days of such occurrences.
9.04 LICENSEE shall submit to PHS within sixty (60) days after each
calendar half-year ending June 30 and December 31 a royalty
report setting forth for the preceding half-year period the
amount of the LICENSED PRODUCTS sold or LICENSED PROCESSES
practiced by or on behalf of LICENSEE in each country within
the LICENSED TERRITORY, the NET SALES, and the amount of
royalty accordingly due. With each such royalty report,
LICENSEE shall submit payment of the earned royalties due. If
no earned royalties are due to PHS for any reporting period,
the written report shall so state. The royalty report shall be
certified as correct by an authorized officer of LICENSEE and
shall include a detailed listing of all deductions made under
Paragraph 2.10 to determine NET SALES and the calculation of
royalties due under Article 6. Notwithstanding the above, the
first such royalty report shall be due the first calendar half
year period LICENSED PRODUCT(S) are sold by LICENSEE,
AFFILIATES, or SUBLICENSEES.
9.05 LICENSEE agrees to forward semi-annually to PHS a copy of such
reports received by LICENSEE from its SUBLICENSEES during the
preceding half-year period as shall be pertinent to a royalty
accounting to PHS by LICENSEE for activities under the
sublicense.
9.06 Royalties due under Article 6 shall be paid in U.S. dollars.
For the purposes of calculating the conversion of foreign
currency to U.S. dollars, the conversion rate to be used for
such calculation shall be the New York foreign exchange rate
quoted in The Wall Street Journal (U.S. Edition) on the last
day of each calendar half-year reporting period ending on June
30 and December 31, respectively. All checks and bank drafts
shall be drawn on United States banks and shall be payable, as
appropriate, to "NIH/Patent Licensing." All such payments
shall be sent to the following address: NIH, P.O. Box 360120,
Pittsburgh, PA 15251-6120. Any loss of exchange, value, taxes,
or other expenses incurred in the transfer or conversion to
U.S. dollars shall be paid entirely by LICENSEE. The royalty
report required by Paragraph 9.04 of this AGREEMENT shall
accompany each such payment, and a copy of such report shall
also be mailed to PHS at its address for notices indicated on
the Signature Page of this AGREEMENT.
9.07 LICENSEE shall be solely responsible for determining if any
tax on royalty income is owed outside the United States and
shall pay any such tax and be responsible for all filings with
appropriate agencies of foreign governments.
Zonagen/PHS Exclusive Patent License L-354-98/0
April 5, 1999 - Final Page 8 of 22
{PAGE}
9.08 Interest and penalties may be assessed by PHS on any overdue
payments in accordance with the Federal Debt Collection Act.
The payment of such late charges shall not prevent PHS from
exercising any other rights it may have as a consequence of
the lateness of any payment.
9.09 All plans and reports required by this Article 9 and marked
"confidential" by LICENSEE shall, to the extent permitted by
law, be treated by PHS as commercial and financial information
obtained from a person and as privileged and confidential, and
any proposed disclosure of such records by PHS under the
Freedom of Information Act (FOIA), 5 U.S.C. Section 552 shall
be subject to the pre-disclosure notification requirements of
45 CFR Section 5.65(d).
10. PERFORMANCE
10.01 LICENSEE shall use its reasonable best efforts to bring the
LICENSED PRODUCTS and LICENSED PROCESSES to PRACTICAL
APPLICATION. "Reasonable best efforts" for the purposes of
this provision shall include adherence to the COMMERCIAL
DEVELOPMENT PLAN at Appendix F and performance of the
BENCHMARKS at Appendix E. The efforts of a SUBLICENSEE shall
be considered the efforts of LICENSEE.
10.02 Upon the FIRST COMMERCIAL SALE, until the expiration or
earlier termination of this AGREEMENT, LICENSEE shall use its
reasonable best efforts to make LICENSED PRODUCTS and LICENSED
PROCESSES reasonably accessible to the United States public.
11. INFRINGEMENT AND PATENT ENFORCEMENT
11.01 PHS and LICENSEE shall notify each other promptly of each
infringement or possible infringement of the LICENSED PATENT
RIGHTS, as well as any facts which may affect the validity,
scope, or enforceability of the LICENSED PATENT RIGHTS of
which either Party becomes aware.
11.02 Pursuant to this AGREEMENT and the provisions of Chapter 29 of
title 35, United States Code, LICENSEE may: a) bring suit in
its own name, at its own expense, and on its own behalf for
infringement of presumably valid claims in the LICENSED PATENT
RIGHTS; b) in any such suit, enjoin infringement and collect
for its use, damages, profits, and awards of whatever nature
recoverable for such infringement; and c) settle any claim or
suit for infringement of the LICENSED PATENT RIGHTS provided,
however, that PHS and appropriate GOVERNMENT authorities shall
have the first right to take such actions at its sole expense.
If LICENSEE desires to initiate a suit for patent
infringement, LICENSEE shall notify PHS in writing. If PHS
does not notify LICENSEE of its intent to pursue legal action
within sixty (60) days, LICENSEE will be free to initiate
suit. PHS shall have a continuing right to intervene in such
suit. LICENSEE shall take no action to compel the GOVERNMENT
either to initiate or to join in any such suit for patent
infringement. LICENSEE may request the GOVERNMENT to initiate
or join in any such suit if necessary to avoid dismissal of
the suit. Should the GOVERNMENT be made a party to any such
suit, LICENSEE shall reimburse the GOVERNMENT for any costs,
expenses, or fees which the GOVERNMENT incurs as a result of
such motion or other action, including any and all costs
incurred by the GOVERNMENT in opposing any such motion or
other action. In all cases, LICENSEE shall keep PHS apprised
of the status and progress of any litigation. Before LICENSEE
commences an infringement action, LICENSEE shall notify PHS
and give careful consideration to the views of PHS and to any
potential effects of the litigation on the public health in
deciding whether to bring suit.
11.03 In the event that a declaratory judgment action alleging
invalidity or non-infringement of any of the LICENSED PATENT
RIGHTS shall be brought against LICENSEE or raised by way of
counterclaim or affirmative defense in an infringement suit
brought by LICENSEE under Paragraph 11.02, pursuant to this
AGREEMENT and the provisions of Chapter 29 of Title 35, United
States Code or other statutes, LICENSEE may: a) defend the
suit in its own name, at its own expense, and on its own
behalf for presumably valid claims in the LICENSED PATENT
RIGHTS; b) in any such suit, ultimately to enjoin infringement
and to collect for its use, damages, profits, and awards of
whatever nature recoverable for such infringement; and c)
settle any claim or suit for declaratory judgment
Zonagen/PHS Exclusive Patent License L-354-98/0
April 5, 1999 - Final Page 9 of 22
{PAGE}
involving the LICENSED PATENT RIGHTS; provided, however, that
PHS and appropriate GOVERNMENT authorities shall have the
first right to take such actions and shall have a continuing
right to intervene in such suit. If PHS does not notify
LICENSEE of its intent to respond to the legal action within
sixty (60) days, LICENSEE will be free to do so. LICENSEE
shall take no action to compel the GOVERNMENT either to
initiate or to join in any such declaratory judgment action.
LICENSEE may request the GOVERNMENT to initiate or to join any
such suit if necessary to avoid dismissal of the suit. Should
the GOVERNMENT be made a party to any such suit by motion or
any other action of LICENSEE, LICENSEE shall reimburse the
GOVERNMENT for any costs, expenses, or fees which the
GOVERNMENT incurs as a result of such motion or other action.
If LICENSEE elects not to defend against such declaratory
judgment action, PHS, at its option, may do so at its own
expense. In all cases, LICENSEE shall keep PHS reasonably
apprised of the status and progress of any litigation. Before
LICENSEE commences an infringement action, LICENSEE shall
notify PHS and give careful consideration to the views of PHS
and to any potential effects of the litigation on the public
health in deciding whether to bring suit.
11.04 In any action under Paragraphs 11.02 or 11.03, the expenses
including costs, fees, attorney fees, and disbursements, shall
be paid by LICENSEE. Up to fifty percent (50%) of such
expenses may be credited against earned royalties payable to
PHS under Paragraph 6.03 under the LICENSED PATENT RIGHTS in
the country in which such a suit is filed. In the event that
fifty (50%) of such expenses exceed the amount of earned
royalties payable by LICENSEE in any calendar year in such
country, the expenses in excess may be carried over as a
credit on the same basis into succeeding calendar years. Such
a credit against litigation expenses, however, shall not apply
to royalties other than earned royalties for the country in
which a suit is brought. Any recovery made by LICENSEE,
through a court judgement or settlement, first shall be
applied to reimburse PHS for royalties withheld as a credit
against litigation expenses and then to reimburse LICENSEE for
its litigation expense. Any remaining amount shall be treated
as NET SALES and earned royalties on such amounts shall be
calculated based on the royalty rate that would have applied
to NET SALES in the year in which such loss occurred.
11.05 PHS shall cooperate fully with LICENSEE in connection with any
action under Paragraphs 11.02 or 11.03. PHS agrees promptly to
provide access to all necessary documents and to render
reasonable assistance in response to a request by LICENSEE.
12. NEGATION OF WARRANTIES AND INDEMNIFICATION
12.01 PHS offers no warranties other than those specified in Article
1.
12.02 PHS does not warrant the validity of any patents or patent
application under the LICENSED PATENT RIGHTS and makes no
representations whatsoever with regard to the scope of the
LICENSED PATENT RIGHTS, or that the LICENSED PATENT RIGHTS may
be exploited without infringing other patents or other
intellectual property rights of third parties.
12.03 PHS MAKES NO WARRANTIES, EXPRESSED OR IMPLIED, OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OF ANY
SUBJECT MATTER DEFINED BY THE CLAIMS OF THE LICENSED PATENT
RIGHTS OR TANGIBLE MATERIALS RELATED THERETO.
12.04 PHS does not represent that it will commence legal actions
against third parties infringing the LICENSED PATENT RIGHTS.
12.05 LICENSEE shall indemnify and hold PHS, its employees,
students, fellows, agents, and consultants harmless from and
against all liability, demands, damages, expenses, and losses,
including but not limited to death, personal injury, illness,
or property damage in connection with or arising out of: a)
the use by or on behalf of LICENSEE, its AFFILIATES, its
SUBLICENSEES, directors, employees, or third parties of any
LICENSED PATENT RIGHTS; or b) the design, manufacture,
distribution, or use of any LICENSED PRODUCTS, LICENSED
PROCESSES or materials by LICENSEE, or other products or
Zonagen/PHS Exclusive Patent License L-354-98/0
April 5, 1999 - Final Page 10 of 22
{PAGE}
processes developed in connection with or arising out of the
LICENSED PATENT RIGHTS. LICENSEE agrees to maintain a
liability insurance program consistent with sound business
practice.
13. TERM, TERMINATION, AND MODIFICATION OF RIGHTS
13.01 This AGREEMENT shall begin on the EFFECTIVE DATE and shall
extend to the expiration of the last to expire of the LICENSED
PATENT RIGHTS unless sooner terminated as provided in this
Article 13.
13.02 In the event that LICENSEE is in default in the performance of
any material obligations under this AGREEMENT, including but
not limited to the obligations listed in Paragraph 13.05, and
if the default has not been remedied within ninety (90) days
after the date of notice in writing of such default, PHS may
terminate this AGREEMENT by written notice and pursue
outstanding amounts owed through procedures provided by the
Federal Debt Collection Act.
13.03 In the event that LICENSEE becomes insolvent, files a petition
in bankruptcy, has such a petition filed against it,
determines to file a petition in bankruptcy, or receives
notice of a third party's intention to file an involuntary
petition in bankruptcy, LICENSEE shall immediately notify PHS
in writing. Furthermore, PHS shall have the right to terminate
this AGREEMENT immediately upon LICENSEE's receipt of written
notice.
13.04 LICENSEE shall have a unilateral right to terminate this
AGREEMENT and/or any licenses in any country or territory by
giving PHS sixty (60) days written notice to that effect.
13.05 PHS shall specifically have the right to terminate or modify,
at its option, this AGREEMENT, if PHS determines that the
LICENSEE: 1) is not executing the COMMERCIAL DEVELOPMENT PLAN
submitted with its request for a license and the LICENSEE
cannot otherwise demonstrate or reasonably justify to PHS's
satisfaction that the LICENSEE has taken, or can be expected
to take within a reasonable time, effective steps to achieve
PRACTICAL APPLICATION of the LICENSED PRODUCTS or LICENSED
PROCESSES; 2) has not achieved the BENCHMARKS as may be
modified under Paragraph 9.02; 3) has willfully made a false
statement of, or willfully omitted, a material fact in the
license application or in any report required by the license
AGREEMENT; 4) has committed a material breach of a covenant or
agreement contained in the license; 5) is not keeping LICENSED
PRODUCTS or LICENSED PROCESSES reasonably available to the
public after commercial use commences; 6) cannot reasonably
satisfy unmet health and safety needs; or 7) cannot reasonably
justify a failure to comply with the domestic production
requirement of Paragraph 5.02 unless waived. In making this
determination, PHS will take into account the normal course of
such commercial development programs conducted with sound and
reasonable business practices and judgment and the annual
reports submitted by LICENSEE under Paragraph 9.02. Prior to
invoking this right, PHS shall give written notice to LICENSEE
providing LICENSEE specific notice of, and a ninety (90) day
opportunity to respond to, PHS's concerns as to the previous
items 1) to 7). If LICENSEE fails to alleviate PHS's concerns
as to the previous items 1) to 7) or fails to initiate
corrective action to PHS's satisfaction, PHS may terminate
this AGREEMENT.
13.06 When the public health and safety so require, and after
written notice to LICENSEE providing LICENSEE a sixty (60) day
opportunity to respond, PHS shall have the right to require
LICENSEE to grant sublicenses to responsible applicants, on
reasonable terms, in any LICENSED FIELDS-OF-USE under the
LICENSED PATENT RIGHTS, unless LICENSEE can reasonably
demonstrate that the granting of the sublicense would not
materially increase the availability to the public of the
subject matter of the LICENSED PATENT RIGHTS. PHS will not
require the granting of a sublicense unless the responsible
applicant has first negotiated in good faith with LICENSEE.
13.07 PHS reserves the right according to 35 U.S. C. Section
209(f)(4) to terminate or modify this AGREEMENT if it is
determined that such action is necessary to meet requirements
for public use specified by federal regulations issued after
the EFFECTIVE DATE of this AGREEMENT and such requirements are
not reasonably satisfied by LICENSEE.
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April 5, 1999 - Final Page 11 of 22
{PAGE}
13.08 Within thirty (30) days of receipt of written notice of PHS's
unilateral decision to modify or terminate this AGREEMENT,
LICENSEE may, consistent with the provisions of 37 CFR 404.11,
appeal the decision by written submission to the designated
PHS official. The decision of the designated PHS official
shall be the final agency decision. LICENSEE may thereafter
exercise any and all administrative or judicial remedies that
may be available.
13.09 Within ninety (90) days of expiration or termination of this
AGREEMENT under this Article 13, LICENSEE shall submit a final
report. Any royalty payments, including those incurred but not
yet paid, and those related to patent expense, due to PHS
shall become immediately due and payable upon termination or
expiration. If terminated under this Article 13, SUBLICENSEES
may elect to convert their sublicenses to direct licenses with
PHS pursuant to Paragraph 4.03. Unless otherwise specifically
provided for under this AGREEMENT, upon termination or
expiration of this AGREEMENT, LICENSEE shall return all
LICENSED PRODUCTS or other materials included within the
LICENSED PATENT RIGHTS to PHS or provide PHS with
certification of their destruction thereof.
14. GENERAL PROVISIONS
14.01 Neither Party may waive or release any of its rights or
interests in this AGREEMENT except in writing. The failure of
either Party to assert a right hereunder or to insist upon
compliance with any term or condition of this AGREEMENT shall
not constitute a waiver of that right or excuse a similar
failure to perform any such term or condition by the other
Party.
14.02 This AGREEMENT constitutes the entire and only agreement and
understanding between the Parties relating to the subject
matter of this AGREEMENT, and all prior negotiations,
representations, promises, agreements, and understandings,
whether written or oral, are merged into, extinguished by, and
completely expressed by this AGREEMENT.
14.03 The provisions of this AGREEMENT are severable, and in the
event that any provision of this AGREEMENT shall be determined
to be invalid or unenforceable under any controlling body of
law, such determination shall not in any way affect the
validity or enforceability of the remaining provisions of this
AGREEMENT.
14.04 If either Party desires a modification to this AGREEMENT, the
Parties shall, upon reasonable notice of the proposed
modification by the Party desiring the change, confer in good
faith to determine the desirability of such modification. No
modification shall be effective until a written amendment is
signed by the signatories to this AGREEMENT or their
designees.
14.05 The construction, validity, performance, and effect of this
AGREEMENT shall be governed by Federal law as applied by the
Federal courts in the District of Columbia.
14.06 All notices required or permitted by this AGREEMENT shall be
given by prepaid, first class, registered or certified mail or
by an express/overnight delivery service provided by a
commercial carrier, properly addressed to the other Party at
the address designated on the following Signature Page, or to
such other address as may be designated in writing by such
other Party. Notices shall be considered timely if such
notices are received on or before the established deadline
date or sent on or before the deadline date as verifiable by
U.S. Postal Service postmark or dated receipt from a
commercial carrier. Parties should request a legibly dated
U.S. Postal Service postmark or obtain a dated receipt from a
commercial carrier or the U.S. Postal Service. Private metered
postmarks shall not be acceptable as proof of timely mailing.
14.07 This AGREEMENT shall not be assigned by LICENSEE except: a)
with the prior written consent of PHS, such consent not to be
withheld unreasonably; or b) as part of a sale or transfer of
substantially the entire business of LICENSEE relating to
operations which concern this AGREEMENT. LICENSEE shall notify
PHS within ten (10) days of any assignment of this AGREEMENT
by LICENSEE.
Zonagen/PHS Exclusive Patent License L-354-98/0
April 5, 1999 - Final Page 12 of 22
{PAGE}
14.08 LICENSEE shall in its use of any PHS-supplied materials comply
with all applicable statutes, regulations, and guidelines,
including PHS and DHHS regulations and guidelines. LICENSEE
agrees not to use the materials for research involving human
subjects or clinical trials in the United States without
complying with 21 CFR Part 50 and 45 CFR Part 46. LICENSEE
agrees not to use the materials for research involving human
subjects or clinical trials outside of the United States
without notifying PHS, in writing, of such research or trials
and complying with the applicable regulations of the
appropriate national control authorities. Written notification
to PHS of research involving human subjects or clinical trials
outside of the United States shall be given no later than
sixty (60) days prior to commencement of such research or
trials.
14.09 LICENSEE acknowledges that it is subject to and agrees to
abide by the United States laws and regulations (including the
Export Administration Act of 1979 and Arms Export Control Act)
controlling the export of technical data, computer software,
laboratory prototypes, biological material, and other
commodities. The transfer of such items may require a license
from the cognizant Agency of the GOVERNMENT or written
assurances by LICENSEE that it shall not export such items to<
329516
|
Zonagen
As referenced in this Exclusive Patent License Agreement:
Zonagen, Inc – Blye (NICHD) and Drs. Pemmaraju Narasinha
Rao, James W. Cessac, and Carmie Kirk Acosta, all of Southwest
Foundation for Biomedical Research (SFBR).
LICENSEE: Zonagen, Inc ., a Delaware corporation, having its principal
office at 2408 Timberloch Place, Suite B-4, The Woodlands, Texas 77380.
Cooperative Research and Development
_____________
Zonagen, Inc – 6/99
----------------------------------------------------- --------
Signature of Authorized Official Date
Michael T. Redman
-----------------------------------------------------
Printed Name
Vice President, Business Development
-----------------------------------------------------
Title
Official and Mailing Address for Notices:
Zonagen, Inc .
2408 Timberloch Place B-4
The Woodlands, Texas 77380
Any false or misleading statements made, presented, or submitted to the
GOVERNMENT, including
_____________
Zonagen, Inc – of the National Institutes of
Health, having its principle office at 6011 Executive Boulevard, Suite 325,
Rockville, MD 20852, U.S.A., and Zonagen, Inc . ("LICENSEE"), a Delaware
corporation, having its principle office at 2408 Timberloch Place, Suite B-4,
The Woodlands, Texas 77280, agree as follows:
_____________
Zonagen, Inc – of Health."
SIGNATURES BEGIN ON NEXT PAGE
NIH Office of Technology Transfer- L-354-98/1
Amendment to Patent License Agreement
Page 1 - Zonagen, Inc . - June 24, 1999 Final
{PAGE}
IN WITNESS WHEREOF, PHS and the LICENSEE have caused this AMENDMENT to be signed
below by their
_____________
Zonagen, Inc – 6/24/99
---------------------------------------- -------------
Jack Spiegel, Ph.D
Director, Division of Technology Development and Transfer
Office of Technology Transfer
National Institutes of Health
For Zonagen, Inc .
By: /s/ Michael T. Redman Date: 6/25/99
---------------------------------------- -------------
Michael T. Redman
--------------------------------------------
Typed Name
VP, Business Development
--------------------------------------------
Title:
NIH Office of Technology
_____________
dt 688597
| |
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Exclusive Patent License Agreement
Exclusive Patent License Agreement (48K)
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EXCLUSIVE PATENT LICENSE AGREEMENT
between
AVENTIS BEHRING GMBH
AND
ZYMOGENETICS, INC.
This Exclusive Patent License Agreement (the "Agreement") is effective as of
December 18, 2002 ("Effective Date") by and between Aventis Behring GmbH
("Licensor"), a German corporation having a principal place of business at
Emil-von-Behring-Strasse 76, D-35041 Marburg, Germany, and ZymoGenetics, Inc.
("Licensee"), a Washington corporation having a principal place of business at
1201 Eastlake Avenue East, Seattle, Washington 98102.
WITNESSETH
WHEREAS, Licensor and Licensee are parties to Interference No. ****
relating to Factor XIII pending in the United States Patent and Trademark office
involving certain patent applications owned or controlled by Licensee and a
patent application within the "Licensed Patents" (as hereinafter defined) owned
by Licensor;
WHEREAS, Licensor is a successor to certain patent rights of Behringwerke
Aktiengesellschaft, which previously entered into a Cross License Agreement with
Hoechst Japan, Ltd. and Licensee relating to Factor XIII dated May 3, 1993
regarding certain patents and patent applications owned or controlled by
Licensee and certain patents and patent applications within the Licensed Patents
owned or controlled by Licensor ("Cross License Agreement");
WHEREAS, Licensor is the present owner or exclusive licensee of the
Licensed Patents;
WHEREAS, Licensee desires to modify certain licenses granted under the
Cross License Agreement as such licenses relate to Licensor and Licensee and
obtain from Licensor an exclusive worldwide license under the Licensed Patents
in the Field of Use for Licensed Products in accordance with the terms of this
Agreement;
**** designates portions of this document that have been omitted pursuant to a
request for confidential treatment filed separately with the commission.
-1-
{PAGE}
WHEREAS, Licensor is willing to modify certain licenses granted under the
Cross License Agreement as such licenses relate to Licensor and Licensee and
grant an exclusive worldwide license under the Licensed Patents in the Field of
Use for Licensed Products to Licensee on the terms and conditions set forth
herein;
NOW THEREFORE, in consideration of the mutual covenants contained herein,
it is agreed by the parties as follows:
1. DEFINITIONS
1.1 Affiliate means any company, corporation, business or entity controlled
by, controlling, or under common control with either Licensee or Licensor.
"Control" means direct or indirect beneficial ownership of at least fifty
percent (50%) interest in the voting stock (or the equivalent) of such
corporation or other business or having the right to direct, appoint or remove a
majority or more of the members of its board of directors (or their equivalent).
1.2 Biologically Active Substance means any substance other than Recombinant
Factor XIII that has intrinsic biological or cell stimulatory activity but not
including substances or compounds whose primary function is to act as a vehicle
for the delivery of Licensed Product, including but not limited to stabilizing
agents, excipients and adjuvants.
1.3 Combination Product means a Licensed Product that includes one or more
Biologically Active Substance(s) to achieve the desired therapeutic response.
1.4 Field of Use means the prevention, diagnosis or treatment of any disease
or condition in humans or animals.
1.5 First Commercial Sale means the first sale of any Licensed Product by
Licensee or its Affiliates or Sublicensees to a bona fide independent third
party.
1.6 Licensed Patents means: (a) the patents and the patent applications set
forth in Exhibits A and B (attached hereto) and made part of this Agreement; (b)
all parent, provisional, divisional, continuation (in whole or in part) or
substitute applications with respect to any of the patent applications described
in 1.6(a); (c) any other patent applications, both U.S. and foreign, based on
the patent applications described in 1.6(a) or 1.6(b); (d) all issued or granted
patents resulting from any of the patent applications described above; and (e)
all issued or granted reissue, re-examination, renewal or extension patents,
supplementary protection certificates, and confirmation or registration patents
or patents of addition based on any of the patents described in 1.6(a) or
1.6(d).
1.7 Licensed Product(s) means any product that contains Recombinant Factor
XIII and is covered by a Valid Claim of an issued patent falling within the
Licensed Patents or that, but for this Agreement, would infringe a Valid Claim
of an issued patent falling within the Licensed Patents.
-2-
{PAGE}
1.8 Net Sales means the amounts invoiced by Licensee or its Affiliates or
its Sublicensees during the Term of this Agreement for the sale of Licensed
Products to bona fide independent third parties, less deductions for: (i) normal
and customary rebates, and cash and trade discounts, actually taken, including
without limitation chargebacks, retroactive price reductions or other
adjustments to pricing of sales to government agencies; (ii) sales, use and/or
other excise taxes, custom duties, surcharges or other governmental charges
(other than taxes imposed on or measured by net income) actually paid in
connection with sales of Licensed Products; (iii) the cost of any bulk packages
and packing, prepaid freight charges and insurance; (iv) amounts actually
allowed or credited due to returns paid; and (v) amounts written off for bad
debt and uncollectable receivables. Transfers of a Licensed Product among
Licensee and its Affiliates or Sublicensees for sale by such Affiliates or
Sublicensees shall not be considered a sale for purposes of calculating Net
Sales. In the event that a Licensed Product is sold as a Combination Product,
Net Sales for purposes of calculating royalty payments on the Combination
Product shall be calculated by multiplying Net Sales of the Combination Product
by the fraction C/(C+D), where C is the fully allocated cost of the Combination
Product (excluding the fully allocated cost of the other Biologically Active
Substance contained therein) and D is the fully allocated cost of the other
Biologically Active Substance. The distribution of (i) reasonable quantities of
free promotional samples of Licensed Product, or (ii) Licensed Product provided
for clinical trials or research purposes shall not be considered a sale of
Licensed Product for royalty purposes.
1.9 Recombinant Factor XIII means a protein having the amino acid sequence of
naturally occurring factor XIII and that is produced by recombinant DNA
techniques, including without limitation production in prokaryotic and
eukaryotic host cells and transgenic animals, as well as variants, derivatives,
modifications, fragments, hybrids, mutants, conjugates, fusion proteins,
analogs, orthologs and homologs thereof.
1.10 Single Agent Product means a Licensed Product that contains no additional
Biologically Active Substance(s) to achieve the desired therapeutic response.
1.11 Sublicensee means any non-Affiliate to whom Licensee grants a sublicense
of some or all of the rights granted to Licensee under this Agreement.
1.12 Territory means the entire world.
1.13 Valid Claim means a claim of an issued and unexpired patent within the
Licensed Patents that has not lapsed or become abandoned or been held
permanently revoked, unenforceable or invalid by a decision of a court or other
governmental agency of competent jurisdiction, unappealable or unappealed within
the time allowed for appeal, and that has not been admitted to be invalid or
unenforceable through reissue or disclaimer or otherwise.
2. GRANT
2.1 Exclusive License. Licensor hereby grants to Licensee and Licensee hereby
accepts from Licensor, upon the terms and conditions herein specified, an
exclusive license under the Licensed
-3-
{PAGE}
Patents in the Territory, and in the Field of Use to develop, make, have made,
import, have imported, use, offer for sale, sell, have sold and otherwise
commercialize Licensed Product(s). For the avoidance of doubt, the exclusive
license granted hereby relates solely to Recombinant Factor XIII.
2.2 Sublicenses. Licensor hereby grants to Licensee and Licensee hereby
332014
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ZymoGenetics
As referenced in this Exclusive Patent License Agreement:
ZYMOGENETICS, INC – version of this exhibit has been
filed separately with the Securities and Exchange Commission.
EXCLUSIVE PATENT LICENSE AGREEMENT
between
AVENTIS BEHRING GMBH
AND
ZYMOGENETICS, INC .
This Exclusive Patent License Agreement (the "Agreement") is effective as of
December 18, 2002 ("Effective Date") by and between Aventis Behring GmbH
("
_____________
ZymoGenetics, Inc – Behring GmbH
("Licensor"), a German corporation having a principal place of business at
Emil-von-Behring-Strasse 76, D-35041 Marburg, Germany, and ZymoGenetics, Inc .
("Licensee"), a Washington corporation having a principal place of business at
1201 Eastlake Avenue East, Seattle, Washington 98102.
WITNESSETH
WHEREAS, Licensor and
_____________
ZymoGenetics, Inc – Licensee and Licensor shall amend this Agreement
to terminate the Cross License Agreement, provided, however, the license granted
by Hoechst Japan, Ltd. to ZymoGenetics, Inc . under the Cross License Agreement
to the HJL Licensed Patent Rights (as defined in the Cross License Agreement)
shall remain in full
_____________
ZymoGenetics, Inc – Aventis Behring L.L.C.
1020 First Avenue
P.O. Box 61501
King of Prussia, PA 19406
Attention: General Counsel
If to ZGI: ZymoGenetics, Inc .
1201 Eastlake Avenue East
Seattle, WA 98102
Attention: Vice President, Intellectual Property and Legal
Affairs
or to such other addresses as the
_____________
Zymogenetics, Inc – subject matter, excluding the Cross
License Agreement. Notwithstanding the foregoing:
(a) the Interference Settlement Agreement dated November 1, 1997 between
Hoechst Aktiengesellschaft and Zymogenetics, Inc . shall remain in full force and
effect in accordance with its terms; and
(b) subject to Section 10.7 (c)hereinbelow, Licensor
_____________
dt 651667
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Exclusive Patent License Agreement
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EXCLUSIVE PATENT LICENSE AGREEMENT
BETWEEN
WESTINGHOUSE SAVANNAH RIVER COMPANY LLC
AND
FINGERPRINT DETECTION TECHNOLOGIES, INC. (FDTI),
A WHOLLY-OWNED SUBSIDIARY OF UTEK CORPORATION
FOR
LED INTENSE HEADBAND LIGHT SOURCE FOR FINGER PRINT ANALYSIS
WSRC LICENSE AGREEMENT NO. LA-02-003
WESTINGHOUSE . . .
858866
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