EXHIBIT 10.3
LICENSE AGREEMENT
THIS LICENSE AGREEMENT ("Agreement") is made and is effective as of August
1, 1996 by and between the UNIVERSITY OF UTAH RESEARCH FOUNDATION, a Utah
non-profit corporation, having its principal place of business at 000 Xxxxxx
Xxx, Xxxxx 000, Xxxx Xxxx Xxxx, XX 00000, hereinafter referred to as "Licensor",
and BIONIC TECHNOLOGIES, INC., a corporation, having its principal place of
business at 0000 Xxxx 000 Xxxxx, Xxxx Xxxx Xxxx, XX 00000, hereinafter referred
to as "Licensee".
W I T N E S S E T H
WHEREAS, certain inventions, generally characterized as * * * and assigned
University of Utah identification number * * * and * * * respectively,
hereinafter collectively referred to as "the Inventions", have been made in the
course of research conducted at the University of Utah by Xxxxxxx Xxxxxxx, Xxxxx
X. Xxxxx and Xxxxxxx X. Xxxxxxxx, Xxxxxxx X. Xxxxxxx, Xxxxxxx X. Xxxxx and Xxxxx
X. Xxxxxxx are covered by Licensor's Patent Rights and Licensed Technology (as
defined below);
WHEREAS, Licensor desires that the Inventions be developed and utilized to
the fullest extent so that its benefits can be enjoyed by the general public;
WHEREAS, Licensee wishes to obtain from Licensor a license under certain
rights for the commercial development, production, manufacture, use and sale of
the Inventions, and Licensor is willing to grant such a license upon the terms
and conditions hereinafter set forth;
NOW THEREFORE, for and in consideration of the covenants, conditions and
undertakings hereinafter set forth, the parties hereby agree as follows:
ARTICLE 1 DEFINITIONS
Section 1.1 "Licensor's Patent Rights" means patent rights to any subject
matter claimed in or covered by (a) any pending or issued United States or
foreign patent or any patent application listed on Exhibit "A" attached hereto,
which is incorporated herein by this reference;
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(b) any continuing or divisional applications thereof; and (c) any patents
issuing on continuing, continuation-in--part or divisional applications,
including reissues thereof.
Section 1.2 "FIELD OF USE" means the sale and/or use of any Licensed
Product and/or Licensed Service in the performance of research and development
of the inventions on various animal and human subjects, for which sale and/or
use the approval from the Food and Drug Administration is not required or has
not been obtained.
Section 1.3 "Licensed Technology" means the technology associated with the
inventions and any intellectual property therein, that has been developed by Xx.
Xxxxxxx Xxxxxx and his co-workers at the University of Utah including those
technologies listed in Exhibit "B".
Section 1.4 "Licensed Product" means any product, apparatus, kit or
component part thereof, or any other subject matter the manufacture, use or sale
of which is covered by any claim or claims included within Licensor's Patent
Rights or which incorporates Licensed Technology.
Section 1.5 "Licensed services" means any method, procedure, process or
other subject matter, the manufacture, use, or sale of which is covered by any
claim or claims included within Licensor's Patent Rights and/or which
incorporates Licensed Technology.
Section 1.6 " . . .covered by . . ." means a Licensed Product that, when
made, used or sold, or a Licensed Service that, when practiced, would
constitute, but for the license granted to Licensee pursuant to this Agreement,
an infringement of any claim or claims included within Licensor's Patent Rights.
Section.1.7 "Net Sales" means xxxxxxxx by Licensee for (a) any Licensed
Product sold or leased, and (b) services performed using any Licensed Product or
Licensed Service, in all cases, net of the sum of the following items (where
applicable): (1) case, trade or quantity discounts actually allowed; (2) sales,
use, tariff, customs duties or other excise taxes directly imposed upon
particular sales; (3) outbound transportation charges prepaid or allowed; and
(4) allowances or credits to third parties for rejections or returns. A Licensed
Product and services performed using a Licensed Product or Licensed Services
shall be considered sold when billed
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out or invoiced or, if not invoiced, when delivered or performed. There shall be
no deductions from Net sales for costs of commissions or collections. Net Sales
shall not include xxxxxxxx for Licensed Products sold or services performed by
Licensee to any Affiliate unless such Affiliate is an end-user of any Licensed
Product or service performed using any Licensed Product or Licensed Method.
Section 1.8 "Affiliate" means any person or entity that controls, is
controlled by, or is under common control with Licensee, directly or indirectly.
For purposes of this definition, "control" and its various inflected forms means
the possession, directly or indirectly, of the power to direct or cause the
direction of the management and policies of such person or entity, whether
through ownership of voting securities, by contract or otherwise.
ARTICLE 2. LICENSE GRANT
Section 2.1 Subject to the terms and conditions set forth herein, Licensor
hereby grants to Licensee a license under Licensor's Patent Rights and Licensed
Technology to make, have made, use and sell any Licensed Product and to practice
any Licensed Services throughout the world where Licensor may lawfully grant
such a license.
Section 2.2 The license granted in Section 2.1 hereof is expressly made
subject to Licensor's reservation of the right to practice under Licensor's
Patent Rights for educational and research purposes at the University of Utah.
Section 2.3 Except as otherwise provided in Section 2.2 hereof, the
license granted in Section 2.1 shall be exclusive and worldwide and effective
until the * * *.
ARTICLE 3 SUBLICENSES
Section 3.1 Licensor hereby grants to Licensee the right to enter into
sublicensing agreements with third parties (hereinafter referred to as
"Sublicensees") to make, have made, and sell any Licensed Product and to
practice any Licensed Method, provided that Licensee has current exclusive
rights thereto under this Agreement in the territory being sublicensed.
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Section 3.2 Any sublicense granted by Licensee to a Sublicensee shall
incorporate all of the terms and conditions of this Agreement, which shall be
binding upon each Sublicensee as if such sublicensee were a party to this
Agreement. Licensee shall pay to Licensor on any sublicense the royalty rate on
Net Sales by such Sublicensee at the same rate that would be due to Licensor
from Net Sales by Licensee, although Licensee is free to charge differential
rates to Sublicensees. In addition, Licensee shall pay to Licensor * * * of any
lump-sum fee or advance payment received by Licensee from any Sublicensee.
Section 3.3 Licensee shall promptly (a) provide Licensor with a copy of
each sublicense granted by Licensee hereunder and any amendments thereto or
terminations thereof; (b) collect and guarantee payment of all royalties due
Licensor from Sublicensees; and (c) summarize and deliver copies of all reports
due to Licensee from Sublicensees.
ARTICLE 4 LICENSE ISSUE CONSIDERATION
Section 4.1 Licensee shall grant to Licensor a non-refundable license
issue consideration of * * * position in Licensee upon execution of this
Agreement.
Such issue consideration shall be deemed earned and immediately due upon
execution of this Agreement.
Section 4.2 In addition, Licensee shall pay to Licensor a nonrefundable
license fee of * * * on or before * * *, or when Licensee first receives equity
funding of * * * or more, whichever is sooner. This fee is not an advance
against earned royalties.
ARTICLE 5 ROYALTIES
Section 5.1 As additional consideration for the license under this
Agreement and subject to Section 6.2, Licensee shall pay to Licensor an earned
royalty of * * * in * * * and one and * * * of Net Sales of Licensed Products or
Services in * * *. Earned royalties shall accrue in each country * * *. Licensee
shall pay all royalties accruing to Licensor in U.S. Dollars within forty-five
(45) days following the calendar quarter in which Net Sales occur. No royalty
shall be
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payable with respect to Net Sales to any Affiliate unless such Affiliate is an
end-user of any Licensed Product or service performed using any Licensed Product
or Licensed Method.
Section 5.2 Commencing on the first January 1 to occur after the six (6)
month period following the date of first occurrence of Net Sales, Licensee shall
pay to Licensor * * *:
(a) * * * * * *
(b) * * * * * *
(c) * * * * * *
Licensee shall continue to pay * * * until * * *. Licensor shall fully credit
each payment * * * against any earned royalties payable by Licensee with respect
to the year in which the * * * is made.
Section 5.3 If any patent or any claim thereof included within Licensor's
Patent Rights shall be found invalid by a court of competent jurisdiction and
last resort, from which decision no appeal may be taken, Licensee's obligation
to pay Licensor royalties based on such patent or claim or any claim patentably
indistinct therefrom shall be for a period of * * *. Licensee shall not,
however, be relieved from paying Licensor the applicable royalties that accrued
prior to the date of such decision or that are based on any of Licensor's Patent
Rights not the subject of such decision.
ARTICLE 6. DUE DILIGENCE
Section 6.1 Upon execution of this Agreement, Licensee shall diligently
proceed with the development, manufacture, sale and use of Licensed Products
and/or Licensed Methods in order to make them readily available to the general
public as soon as possible on commercially reasonable terms.
Section 6.2 Licensee shall perform the following obligations as part of
its due diligence activities hereunder:
(a) Achieve Net Sales by * * *.
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Section 6.3 The above milestones shall be extendable for up to two (2)
years upon payment of * * * per year per.
Section 6.4 Licensee shall exercise reasonable business judgment in
meeting its due diligence obligations hereunder.
Section 6.5 Commencing on January 1, 1997 and on each January 1
thereafter, until the first occurrence of Net Sales, Licensee shall submit to
Licensor a written report covering Licensee's progress in (a) development and
testing of all, Licensed Research; (b) achieving the due diligence milestones
specified herein; and (c) preparing, filing, and obtaining of any approvals
necessary for marketing the Licensed Products and Licensed Methods.
ARTICLE 7. CONFIDENTIALITY
Section 7.1 Licensee and Licensor acknowledge that they may provide
certain information to the other party about the Inventions that is considered
to be confidential. Licensee and Licensor shall take reasonable precautions to
protect such confidential information. Such precautions shall involve at least
the same degree of care and precaution that the recipient of such information
customarily uses to protect its own confidential information.
Section 7.2 Licensee acknowledges that Licensor is subject to the Utah
Governmental Records Access and Management Act ("GRAMA"), Section 63-2-101 et
seq., Utah Code Xxx. (1953), as amended. Licensor shall keep confidential any
information provided to Licensor by Licensee that Licensee considers
confidential, to the extent allowable under GRAMA and as provided in Section
53B-16-301 et seq., Utah Code Xxx. In order to be eligible for such protection
under GRAMA, confidential information of Licensee disclosed to Licensor must be
in written or other tangible form, marked as proprietary, and accompanied by a
written claim by Licensee stating the reasons that such information must be kept
confidential.
ARTICLE 8 QUARTERLY REPORTS
Section 8.1 Within forty-five (45) days after the calendar year in which
Net Sales first occur, and within 45 days after each calendar quarter
thereafter, Licensee shall provide Licensor
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with a written report detailing all sales and uses, if any, made of Licensed
Products and Licensed Methods during the preceding calendar quarter, and
detailing the amount of Net Sales made during such quarter and calculating the
royalties due pursuant to section 5.1 hereof. Each such report shall be signed
by an officer of Licensee (or the officer's designee).
Section 8.2 In addition to the regular reports required by Section 8.1,
Licensee shall provide a written report to Licensor of the date of first
occurrence of Net Sales in each country within sixty (60) days of its
occurrence.
ARTICLE 9 PATENT PROSECUTION AND MAINTENANCE
Section 9.1 Licensor shall diligently prosecute and maintain Licensor's
Patent Rights with legal counsel of its choice, after consultation with
Licensee. Licensor shall provide Licensee with copies of all relevant
documentation and keep Licensee informed, and apprised of the continuing
prosecution. Licensee shall keep any such documentation and information
confidential.
Section 9.2 Licensee shall pay all costs and legal fees incurred by
Licensor in the preparation, prosecution and maintenance of Licensor's Patent
Rights, including without limitation, any taxes on such patent rights. Licensor
shall credit any costs and fees paid by Licensee pursuant to this Article 9
toward earned royalty payments due to Licensor for Net Sales in the country
where such patent costs were incurred. Notwithstanding the foregoing, no credit
may be applied toward the license issue fee or* * * royalty, and total credits
for costs and fees paid by Licensee pursuant to this Article 9 in any given
reporting period shall not be more than * * * of the royalty payment that would
otherwise be due. Unused credits may be carried forward indefinitely until used.
ARTICLE 10 PATENT MARKING
Licensee shall xxxx all Licensed Products made, used or sold under the
terms of this Agreement, or their containers, in accordance with all applicable
patent marking laws.
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ARTICLE 11 BOOKS AND RECORDS
Licensee shall keep true and complete books and records containing an
accurate accounting of all data necessary for proper computation of royalties
and other payments hereunder. Licensee shall preserve such books and records for
five (5) years after the termination of this Agreement. Such books and records
shall be open to inspection by Licensor and its representatives, at Licensor's
expense, upon notice to Licensee, at reasonable times for the purpose of
verifying the accuracy of the quarterly reports and computations rendered by
Licensee.
ARTICLE 12 TERM OF THIS AGREEMENT
This Agreement shall be in full force and effect from the date hereof
until * * *.
ARTICLE 13 TERMINATION BY LICENSOR
Section 13.1 If Licensee should (a) fail to deliver to Licensor any statement or
report required hereunder when due; (b) fail to make any payment at the time
that the same should be due; (c) violate or fail to perform any covenant,
condition, or undertaking of this Agreement to be performed by it hereunder; or
(d) file a bankruptcy action, or have a bankruptcy action against it, or become
insolvent, enter into a composition with creditors or have a receiver appointed
for it; then Licensor may give written notice of such default to Licensee. If
Licensee should fail to cure such default within thirty (30) days of such
notice, Licensor shall have the right to terminate this Agreement and any
licenses granted hereunder.
Section 13.2 No termination of this Agreement by Licensor shall relieve
Licensee of its obligation to pay any royalty or license fees due or owing at
the time of such termination and pay all attorneys' fees and costs incurred by
Licensor in enforcing any obligation of Licensee or accrued right of Licensor
after termination. Articles 7 and 20 shall survive any termination of this
Agreement.
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ARTICLE 14. TERMINATION BY LICENSEE
Section 14.1 Licensee may terminate this Agreement at any time and from
time to time without cause, by giving written notice thereof to Licensor. Such
termination shall be effective ninety (90) days after such notice and all
Licensee's rights associated therewith shall cease as of that date.
Section 14.2 Any termination pursuant to Section 14.1 shall not relieve
Licensee of any obligation or liability accrued hereunder prior to such
termination, or rescind or give rise to any right to rescind any payments made
or other consideration given to Licensor hereunder prior to the time such
termination becomes effective. Such termination shall not affect in any manner
any rights of Licensor arising under this Agreement prior to the date of such
termination.
ARTICLE 15 DISPOSITION OF LICENSED PRODUCTS ON HAND UPON TERMINATION
Upon expiration or termination of this Agreement by either party, Licensee
shall provide Licensor with a written inventory of all Licensed Products in
process of manufacture, in use or in stock. Licensee may dispose of any such
Licensed Products within the ninety (90)-day period following such expiration or
termination, provided, however, that Licensee shall pay royalties and render
reports to Licensor thereon in the manner specified herein.
ARTICLE 16. WARRANTY BY LICENSOR
Section 16.1 Licensor warrants that it has the lawful right to grant the
license set forth in this Agreement.
Section 16.2 EXCEPT AS EXPRESSLY PROVIDED IN SECTION 16.1, THE PARTIES
ACKNOWLEDGE AND AGREE THAT LICENSOR HAS MADE NO REPRESENTATIONS OR WARRANTIES,
EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO, WARRANTIES OF MERCHANTABILITY
OR FITNESS FOR A PARTICULAR PURPOSE. IN NO EVENT SHALL LICENSOR BE HELD
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RESPONSIBLE FOR ANY SPECIAL, INDIRECT OR CONSEQUENTIAL DAMAGES ARISING OUT OF
THE USE OF PATENT RIGHTS, EVEN IF LICENSOR IS ADVISED IN ADVANCE OF THE
POSSIBILITY OF SUCH DAMAGES.
Section 16.3 Nothing in this Agreement shall be construed as:
(a) a warranty or representation by Licensor as to the validity or
scope of any Licensor's Patent Rights.
(b) a warranty or representation by Licensor that anything made,
used, sold or otherwise disposed of pursuant to any license granted
under this Agreement is or will be free from infringement of patents
of third parties.
(c) an obligation by Licensor to bring or prosecute actions or
suits against third parties for patent infringement, except as
expressly provided in Article 17 hereof.
(d) conferring by implication, estoppel or otherwise any license
or rights under any patents of Licensor other than Licensor's Patent
Rights.
ARTICLE 17 INFRINGEMENT
Section 17.1 If either party learns of a claim of infringement of or by
any of Licensor's Patent Rights licensed under this Agreement, that party shall
give written notice of such claim to the other party. Licensor shall then use
reasonable efforts to terminate such infringement. In the event Licensor fails
to xxxxx the infringing activity within ninety (90) days after such written
notice or to bring legal action against the third party, Licensee may bring suit
for patent infringement, naming Licensor as nominal party plaintiff.
Section 17.2 Any such legal action shall be at the expense of the party by
whom suit is filed (hereinafter referred to as the "Litigating Party"). Any
damages or costs recovered by the Litigating Party in connection with a legal
action filed by it hereunder, and remaining after the Litigating Party is
reimbursed for its costs and expenses reasonably incurred in the lawsuit, shall
be equally divided between Licensee and Licensor.
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Section 17.3 Licensee and Licensor shall cooperate with each other in
litigation proceedings instituted hereunder, provided that such cooperation
shall be at the expense of the Litigating Party, and such litigation shall be
controlled by the Litigating Party.
ARTICLE 18 WAIVER
No waiver by either party hereto of any breach or default of any of the
covenants or agreements herein set forth shall be deemed a waiver as to any
subsequent and/or similar breach or default.
ARTICLE 19 ASSIGNABILITY
This Agreement is binding upon and shall inure to the benefit of the
parties, their successors and assigns. Subject to Licensee's rights to
sublicense, as set forth in Article 3 hereof, Licensee may assign this Agreement
only with the written consent of Licensor.
ARTICLE 20 INDEMNIFICATION
Licensee shall indemnify, hold harmless and defend Licensor, the
University of Utah, and their respective officers, employees and agents, against
any and all claims. suits, losses, damage, costs, fees and expenses (including
reasonable fees of attorneys) resulting from or arising out of exercise of any
license granted under this Agreement.
ARTICLE 21 LATE PAYMENTS
In the event royalty payments or other fees are not received by Licensor
when due hereunder, Licensee shall pay to Licensor interest charges at the rate
of ten percent (10%) per annum on the total royalties or fees due for the
reporting period.
ARTICLE 22 NOTICES
Any payment, notice or other communication required or permitted to be
given to either party hereto shall be in writing and shall be deemed to have
been properly given and effective: (a) on the date of delivery if delivered in
person during recipient's normal business hours; or (b) on the date of delivery
if delivered by courier, express mail service or first-class mail, registered
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or certified. Such notice shall be sent or delivered to the respective addresses
given below, or to such other address as either party shall designate by written
notice given to the other party as follows:
In the case of Licensee:
BIONIC TECHNOLOGIES, INC.
0000 Xxxx 000 Xxxxx
Xxxx Xxxx Xxxx, XX 00000
In the case of Licensor:
UNIVERSITY OF UTAH RESEARCH FOUNDATION
Technology Transfer Xxxxxx
000 Xxxxxx Xxx, Xxxxx 000
Xxxx Xxxx Xxxx, XX 00000
With a copy to:
OFFICE OF GENERAL COUNSEL
University of Utah
000 Xxxx Xxxxxxxx
Xxxx Xxxx Xxxx, Xxxx 00000
ARTICLE 23 FOREIGN LAWS
Section 23.1 When required by local/national law, Licensee shall register
this Agreement, pay all costs and legal fees connected therewith, and otherwise
insure that the local/national laws affecting this Agreement are fully
satisfied.
Section 23.2 Licensee shall comply with all applicable U.S. laws dealing
with the export of technology or technical information.
ARTICLE 24 GOVERNING LAW
This Agreement shall be interpreted and construed in accordance with the
laws of the State of Utah, without application of any principles of choice of
laws.
ARTICLE 25 GENERAL PROVISIONS
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Section 25.1 In the event of any controversy or claim between the parties
relating to this Agreement that is not settled by informal means, the same shall
be submitted to binding compulsory arbitration and judgment in Salt Lake City,
Utah pursuant to Title 78, Chapter 31a, Utah code Xxx. (1953), as amended, and
shall be determined in accordance with the Commercial Arbitration Rules of the
American Arbitration Association to the extent such rules are not in conflict
with such law. All costs and expenses, including reasonable attorneys' fees, of
the prevailing party in connection with controversy or claim shall be borne by
the other party.
Section 25.2 The headings of the several sections are inserted for
convenience of reference only and are not intended to be a part of or to affect
the meaning or interpretation of this Agreement.
Section 25.3 This Agreement shall not be binding upon the parties until it
has been signed herein below by or on behalf of each party, in which event it
shall be effective as of the date first above written.
Section 25.4 No amendment or modification of this Agreement shall be valid
or binding upon the parties unless made in writing and signed by both parties.
This Agreement may be signed in counterpart, each of which documents shall, when
taken together, constitute one and the same original document.
Section 25.5 This Agreement embodies the entire understanding of the
parties and supersedes all previous communications, representations or
understandings, either oral or written, between the parties relating to the
subject matter, hereof.
Section 25.6 The parties agree to execute and deliver all documents,
provide all information and take or forbear from taking all such action as may
be necessary or appropriate to achieve the purposes of this Agreement.
Section 25.7 This Agreement may be signed in counterparts, each of which
when taken together shall constitute one fully executed document. Each
individual executing this Agreement on behalf of a legal entity does hereby
represent and warrant to each other person so signing that he or she has been
duly authorized to execute this Agreement on behalf of such entity.
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IN WITNESS WHEREOF, Licensor and Licensee have executed this Agreement by
their respective officers hereunto duly authorized, on the day and year
hereinafter written.
"LICENSEE" "LICENSOR"
BIONIC TECHNOLOGIES, INC. UNIVERSITY OF UTAH
RESEARCH FOUNDATION
By _________________________________ By _________________________________
(Signature) (Signature)
Name _______________________________ Name _______________________________
(Please Print)
Title ______________________________ Title ______________________________
Date _______________________________ Date _______________________________
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AMENDMENT TO THE LICENSE AGREEMENT BETWEEN
UNIVERSITY OF UTAH RESEARCH FOUNDATION
AND
BIONIC TECHNOLOGIES INCORPORATED
FOR
* * *
* * *
* * *
THIS AMENDMENT to a certain License Agreement is made and is effective as
of October 15, 1997, by and between The University of Utah Research Foundation,
having a principal place of business at 000 Xxxxxx Xxx, Xxxxx 000, Xxxx Xxxx
Xxxx, XX 00000, hereinafter referred to as Licensor and Bionic Technologies
Inc., having its principal place of business at 0000 Xxxx 000 Xxxxx, Xxxx Xxxx
Xxxx, XX 00000, hereinafter referred to as Licensee.
W I T N E S S E T H
WHEREAS, Licensor and Licensee have entered into a License Agreement dated
August 1, 1996 for * * * respectively hereinafter referred to as "License
Agreement"; and
WHEREAS, Licensor has received the inventions entitled * * * respectively,
hereinafter referred to as "New Inventions"; and
WHEREAS, Licensee would like incorporate the New Inventions in the above
License Agreement; and.
WHEREAS Licensor is willing to grant to Licensee such a license to New
Inventions;
NOW THEREFORE, for and in consideration of the covenants, conditions and
undertakings hereinafter set forth in the License Agreement, it is agreed by and
between the parties to add the New Inventions to Exhibit B of the License
Agreement.
In all other respects the License Agreement shall remain unchanged.
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IN WITNESS WHEREOF, the parties have caused these presents to be signed in
duplicate by their duly authorized representatives.
BIONIC TECHNOLOGIES, INC. UNIVERSITY OF UTAH
RESEARCH FOUNDATION
By _________________________________ By _________________________________
(Signature) (Signature)
Name _______________________________ Name _______________________________
(Please Print)
Title ______________________________ Title ______________________________
Date _______________________________ Date _______________________________
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AMENDMENT NO, 2
TO THE LICENSE AGREEMENT BETWEEN
UNIVERSITY OF UTAH RESEARCH FOUNDATION
AND
BIONIC TECHNOLOGIES INCORPORATED
FOR
* * *
THIS AMENDMENT to a certain License Agreement is made and is effective as
of November 10, 1999 by and between the University of Utah Research Foundation,
having a principal place of business at 000 Xxxxxxx Xx., Xxxxx 000, Xxxx xxxx
Xxxx, XX 00000, hereinafter referred to as Licensor and Bionic Technologies,
Inc., having its principal place of business at 0000 Xxxx 000 Xxxxx, Xxxx Xxxx
Xxxx, XX 00000, hereinafter referred to as Licensee.
W I T N E S S E T H:
WHEREAS, Licensor and Licensee have entered into a License Agreement dated
August 1, 1996 for * * *, as amended by Amendment 1, thereto dated October 15,
1997 respectively, hereinafter referred to as "License Agreement;" and
WHEREAS, Licensor has received the invention entitled * * * respectively,
hereinafter referred to as "New Invention;" and
WHEREAS Licensee would like to incorporate the New Invention in the above
License Agreement; and
WHEREAS Licensor is willing to grant to Licensee such a license to the New
Invention;
A G R E E M E N T :
NOW, THEREFORE, the parties agree as follows:
1.) For and in consideration of the covenants, conditions and undertakings
hereinafter set forth in the License Agreement, it is agreed by and between the
parties to add the New Invention to Exhibit B of the License Agreement.
2.) Amendment of Section 1.3. Section 1.3 of the License Agreement is
amended by deleting the sentence under Section 1.3 and replacing it with the
following:
"'Licensed Technology'" means the technology and the intellectual property
associated with the Inventions listed in Exhibit 'A' and Exhibit 'B,' developed
by Xx. Xxxxxxx Xxxxxxx and his coworkers at the University of Utah."
3.) In all other respects the License Agreement shall remain unchanged.
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IN WITNESS WHEREOF, the parties have executed this Amendment as of the
date first above written:
LICENSEE: LICENSOR:
BIONIC TECHNOLOGIES, INC. UNIVERSITY OF UTAH
RESEARCH FOUNDATION
By: _______________________________ By: _______________________________
Xxxxx X. Xxxx, President Xxxxxxx X. Xxxxx. Ph.D.
President
Date: _____________________________ Date: _____________________________
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BIONIC TECHNOLOGIES, INC.
AMENDMENT NO. 3 TO LICENSE AGREEMENT
THIS AMENDMENT NO. 3 TO LICENSE AGREEMENT (the "AMENDMENT") is made as of
February 7, 2002 by and between BIONIC TECHNOLOGIES, LLC., a Utah limited
liability company, having its principal place of business at 0000 Xxxx 000
Xxxxx, Xxxx Xxxx Xxxx, XX 00000, hereinafter referred to as (the "LICENSEE"),
and the UNIVERSITY OF UTAH RESEARCH FOUNDATION, a Utah non-profit corporation,
having its principal place of business at 000 Xxxxxxx Xxxxx, Xxxxx 000, Xxxx
Xxxx Xxxx, Xxxx 00000, hereinafter referred to as (the "LICENSOR").
RECITALS
WHEREAS, the LICENSEE's predecessor in interest, Bionic Technologies, Inc.
("Licensee's Predecessor"), and the LICENSOR executed the AGREEMENT dated August
1, 1996 ("Original License"), pursuant to which LICENSEE took a license to
certain inventions, generally characterized as: * * * ; and
WHEREAS, LICENSEE'S Predecessor and LICENSOR amended the Original License
by means of an amendment dated October 15, 1997 ("Amendment No. 1") and an
amendment dated November 10, 1999 ("Amendment No. 2") (the Original Licensee, as
amended by the Amendment No. 1 and the Amendment No. 2, being herein referred to
as the "Amended License"); and
WHEREAS, as of January 1, 2001, LICENSEE'S predecessor assigned the
Amended License to LICENSEE with LICENSOR'S consent and thereupon LICENSEE
assumed all obligations thereunder; and
WHEREAS, the LICENSEE and the LICENSOR agree to amend the Amended License
to make the following changes and additions.
NOW, THEREFORE, in consideration of the foregoing and the promises and
covenants contained herein, the sufficiency of which is hereby acknowledged, the
parties agree as follows:
I. MODIFICATION TO THE TERMS OF THE AMENDED LICENSE
1. Section 1.2 of the Amended License is hereby replaced in its entirety
with the following:
"Section 1.2 "FIELD OF USE" means all medical and research applications in
animal and human subjects
2. Section 2.1 of the Amended License is hereby replaced in its entirety
with the following:
"Section 2.1 Subject to the terms and conditions set forth herein,
Licensor hereby grants to Licensee an exclusive, worldwide license under
Licensee's Patent Rights and
*** Information redacted pursuant to a confidential treatment request. An
unredacted version of this exhibit has been filed separately with the
Commission.
Licensed Technology to make, have made, use and sell any Licensed Product
and to practice any Licensed Services in the FIELD OF USE.
3. Section 3.2 of the Amended License is hereby replaced in its entirety
with the following:
"Section 31 Any sublicense granted by Licensee to a Sublicensee shall
incorporate all of the terms and conditions of this Agreement, which shall
be binding upon each Sublicensee as if such Sublicensee were a party to
this Agreement. Licensee shall pay to Licensor on any sublicense a
percentage of the gross consideration received by the Licensee from the
Sublicensee for grant of the sublicense, whether that consideration comes
in the form of up-front license fees, royalties, milestone payments or in
any other form, except as noted below in this Section 3.1. The percentage
of gross consideration due to Licensor as described herein shall be
determined according to the following chart:
YEAR* PERCENTAGE
----- ----------
* * * * * *
* * * * * *
* * * * * *
*"YEAR" shall mean the year in which the consideration is received by the
Licensee from the Sub-licensee as specified by the dates, beginning on * *
*.
Licensee shall not be obligated to pay Licensor for consideration received
from a Sublicensee on the following items:
a) payments for training Sublicensees;
b) payments for research and development;
c) payments for fees and expenses associated with patent
prosecution;
d) payments for advance commitments of the purchase of products
in excess of the purchase price (for which royalties would be
paid in accordance with the terms of Article 5);
e) payments in respect of equity investments in Licensee; and
f) payments in respect of loans to Licensee.
4. A new Section 3.4 is hereby added to the Amended License as follows:
"Section 3.4 In the event that Licensor or Licensee receives a written
request from a capable third party for a license to use the Licensor's
Patent Rights or Licensed Technology in a subfield of use which does not
compete with the Licensed Products or Licensed Services already offered
for sale by Licensee or in the process of being developed by Licensee so
as to be available for sale within one (1) year as demonstrated by
Licensee to the reasonable satisfaction of Licensor, Licensee agrees to
negotiate in good faith to grant a sublicense to said third party. If such
negotiation has not been successfully completed within six (6) months from
the date Licensee first receives such request, Licensor shall have the
right to grant a license to said party for said subfield of use under
substantially similar, or at Licensor's discretion, less favorable, terms
to those
*** Information redacted pursuant to a confidential treatment request. An
unredacted version of this exhibit has been filed separately with the
Commission.
2
contained in this Agreement provided that the royalty rate shall be no
lower than that contained herein. If Licensor grants a license under this
provision, Licensor agrees to share * * * of its net royalties, net
milestone payments and net license fees with Licensee.
5. Section 5.1 of the Amended License is hereby amended in part by
replacing the term "* * *" with the term "* * *."
6. Section 5.3 of the Amended License is hereby amended by replacing it in
its entirety with the following language:
"Section 5.3 If any patent or claim thereof included within Licensor's
Patent Rights shall be found invalid by a court of competent jurisdiction
and last resort, from which decision no appeal may be taken, Licensee's
obligation to pay Licensor royalties based on such patent or claim or any
claim patentably indistinct therefrom shall cease as of that date.
However, Licensee shall not be relieved from paying Licensor the
applicable royalties that accrued prior to the date of such decision or
that are based on any of Licensor's Patent Rights not the subject of such
a decision."
7. Section 4.2 of the Amended License is hereby replaced in its entirety
with the following:
"Section 4.2 In addition, Licensee shall pay to Licensor a non-refundable
license fee of * * * on a deferred and contingent basis as described
below, but no later than December 31, 2003. In order to satisfy this
obligation, Licensee shall pay Licensor * * * of all investments (equity
or long-term debt) in Licensee, when it receives such an investment, up to
a cumulative investment of * * *. If Licensee has not paid Licensor the
total license fee of * * * by December 31, 2003, the remainder shall be
due in full on that date.
8. Article 17 of the Amended License is hereby replaced in its entirety
with the following:
"ARTICLE 17. INFRINGEMENT
Section 17.1 If either party learns of a claim of infringement of or
by any of Licensor's Patent Rights licensed under this Agreement, that
party shall give written notice of such claim to the other party. Licensee
shall then use reasonable efforts to terminate such infringement. In the
event Licensee fails to xxxxx the infringing activity within ninety (90)
days after such written notice or Licensee fails to bring legal action
against the third party within a reasonable time, Licensor may bring suit
for patent infringement. No settlement, consent judgment or other
voluntary final disposition of the suit may be entered into without the
consent of Licensor, which consent shall not be unreasonably withheld.
Section 17.2 Any such legal action shall be at the expense of the
party by whom suit is filed, hereinafter referred to as the "Litigating
Party". Any damages or costs recovered by the Litigating Party in
connection with a legal action, filed by it hereunder, and remaining after
the Litigating Party is reimbursed for its costs and expenses
*** Information redacted pursuant to a confidential treatment request. An
unredacted version of this exhibit has been filed separately with the
Commission.
3
reasonably incurred in the lawsuit, and after any royalties or other
payments due to Licensor under Articles 3, 4, and 5 are paid, shall be
divided between Licensee and Licensor with 25% going to Licensor and 75%
going to Licensee.
Section 17.3 Licensee and Licensor shall cooperate with each other
in litigation proceedings instituted hereunder, provided that such
cooperation shall be at the expense of the Litigating Party, and such
litigation shall be controlled by the Litigating Party."
9. Article 19 of the Amended License is hereby replaced in its entirety
with the following:
"This Agreement is binding upon and shall inure to the benefit of
the parties, their successors and assigns. Subject to Licensee's rights to
sublicense, as set forth in Article 3 hereof, Licensee may assign this
Agreement only with the written consent of Licensor, which consent shall
not be unreasonably withheld, or upon the sale or assignment of all or
substantially all of the assets of Licensee to which this license
Agreement relates."
10. Article 22 of the Amended License shall be amended in part by
replacing subpart (b) thereof and the addresses for Licensee and Licensor set
forth therein with the following while the remainder of Article 22 shall be
unchanged:
"(b) on-the date of delivery if delivered by courier, express mail service
or fast-class mail, registered or certified, or by fax."
As to the addresses:
"In the case of Licensee:
BIONIC TECHNOLOGIES, LLC.
0000 Xxxx 000 Xxxxx
Xxxx Xxxx Xxxx, XX 00000
FX: 000-000-0000;
In the case of Licensor
University of Utah Technology Transfer Xxxxxx
000 Xxxxxxx Xxxxx, Xxxxx 000
Xxxx Xxxx Xxxx, XX 00000
FX: 000-000-0000"
II. CONSIDERATION FOR THIS AMENDMENT
1. In consideration for this AMENDMENT, upon execution of this AMENDMENT,
LICENSEE shall:
*** Information redacted pursuant to a confidential treatment request. An
unredacted version of this exhibit has been filed separately with the
Commission.
4
issue to LICENSOR a warrant to purchase * * * units of Interests in
LICENSEE. That warrant shall be exercisable by LICENSOR for the price of *
* * per unit of Interests at any time after June 30, 2002 and prior to
July 1, 2007.
III. INTERPRETATION
1. All of the provisions of Article 25 of the Amended License are hereby
incorporated into this Section III as though set forth herein in full and shall
govern the interpretation of this AMENDMENT
2. Except as otherwise amended by this AMENDMENT, the Amended License
shall remain in full force and effect,
IN WITNESS WHEREOF, the parties have executed this AMENDMENT to the Amended
License as of the date fast above written.
"LICENSEE" "LICENSOR"
BIONIC TECHNOLOGIES, LLC. UNIVERSITY OF UTAH
RESEARCH FOUNDATION
By _______________________________ __________________________________
(Signature) (Signature)
Name: Xxxxx X. Xxxx Name: Xxxxxxx X. Xxxxxxxxx
Title: President Title: President
*** Information redacted pursuant to a confidential treatment request. An
unredacted version of this exhibit has been filed separately with the
Commission.
5
ASSIGNMENT AND ASSUMPTION AGREEMENT
This Assignment and Assumption Agreement is executed as of the 13th day of
August, 2002 by and between Bionic Technologies, LLC, a Utah limited liability
company ("Assignor"), and Cyberkinetics, Inc., a Delaware corporation
("Assignee").
WHEREAS, Assignor and Assignee are parties to that certain Contribution
Agreement dated as of the date hereof (the "Contribution Agreement"), provided
for the purchase by Assignee of substantially all of the assets, properties,
rights and business as a going concern of Assignor and the assumption by
Assignee of certain of the liabilities of Assignor. All capitalized terms used
herein which are not defined herein shall have the meanings specified in the
Contribution Agreement.
WHEREAS, Assignor is the licensee under that certain License Agreement
dated as of August 1, 1996, as amended, between Assignor and the University of
Utah Research Foundation, as licensor ("Licensor"), covering inventions * * *
(the "License").
WHEREAS, Assignor proposes to assign the License to Assignee and Licensor
has consented in writing to such assignment.
NOW, THEREFORE, for and in consideration of the mutual covenants contained
in the Contribution Agreement and other good and valuable consideration, receipt
of which is hereby acknowledged, Assignor hereby grants, bargains, sells,
assigns, transfers and sets over to Assignee and its successors and assigns all
of the right, title and interest of Assignor in, to and under the License.
TO HAVE AND TO HOLD, the same unto Assignee, its legal representatives,
successors and assigns from and after the date hereof, subject, however, to the
terms, covenants, conditions and provisions of the License.
Assignee hereby accepts this Agreement subject to the terms and conditions
herein contained and does hereby assume, without exculpation, as of the date
hereof, and becomes responsible for and agrees to perform, discharge, fulfill
and observe all of the licensee's obligations, liabilities, covenants,
conditions and provisions under the License accruing from before and after the
date hereof with the same force and effect as if Assignee were the original
licensee thereunder, and Assignee agrees to be liable for the observation and
performance thereof from and after the date hereof.
Assignor agrees to protect, defend, indemnify and hold and save harmless
Assignee from and against any and all Liabilities relating to the License only
to the extent that Assignor has agreed to indemnify Assignee in Section 9 of the
Contribution Agreement.
Assignee agrees to protect, defend, indemnify and hold and save harmless
Assignor from and against any and all Liabilities relating to the License only
to the extent that Assignee has agreed to indemnify Assignor in Section 9 of the
Contribution Agreement.
This Agreement is made without recourse or warranty except as set forth in
the Contribution Agreement.
*** Information redacted pursuant to a confidential treatment request. An
unredacted version of this exhibit has been filed separately with the
Commission.
This Agreement shall be binding upon and shall inure to the benefit of
Assignor and Assignee and their respective legal representatives, heirs,
successors and assigns.
IN WITNESS WHEREOF, Assignor and Assignee have executed this Agreement as
of the date first set forth above,
ASSIGNOR:
BIONIC TECHNOLOGIES, LLC
By: ________________________________
Name:
Title:
ASSIGNEE:
CYBERKINETICS, INC.
By: ________________________________
Name:
Title:
APPROVED AND ACCEPTED:
UNIVERSITY OF UTAH RESEARCH FOUNDATION
By: _________________________________
Signature
Print name: _________________________
Title: ______________________________
Date: _______________________________
*** Information redacted pursuant to a confidential treatment request. An
unredacted version of this exhibit has been filed separately with the
Commission.
2
