Exhibit 10.12
UIC Intellectual Property Office
EXCLUSIVE LICENSE AGREEMENT
for UIC's technology
Betulinic Acid as Anti-Melanoma (CN43)
Semi-Synthesis of Betulinic Acid and Derivatives (CQ15)
Use of Betulinic Acid for Cancer Treatment (CQ16)
Treatment and Prevention of Human Melanoma with Betulinic Acid
Derivatives (CQ17)
TABLE OF CONTENTS
PREAMBLE
ARTICLES:
I DEFINITIONS
II GRANT
III DUE DILIGENCE
IV PAYMENTS
V REPORTS AND RECORDS
VI PATENT PROSECUTION
VII INFRINGEMENT
VIII PRODUCT LIABILITY
IX EXPORT CONTROLS
X NON-USE OF NAMES
XI ASSIGNMENTS
XII TERMINATION
XIII PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
XIV MISCELLANEOUS PROVISIONS
UIC Intellectual Property Office
This Agreement is entered into this second day of December, 1999 ("Effective
Date") by and between THE BOARD OF TRUSTEES OF THE UNIVERSITY OF
ILLINOIS, a
body corporate and politic of the State of
Illinois through its Office of The
Vice Chancellor for Research, Intellectual Property Office, 0000 Xxxx Xxxx
Xxxxxx, Xxxxxxx, Xxxxxxxx 00000 and on behalf of the Chicago campus and units
reporting to it (hereinafter "UNIVERSITY") and Advanced Life Sciences, a
corporation of the State of
Illinois with principal offices at 00000 X.
Xxx Xxxxxx, Xxxxx X, Xxxxxx, XX, 00000, (hereinafter "LICENSEE").
WITNESSETH
WHEREAS, in the course of research conducted under UNIVERSITY auspices, Xxxx X.
Xxxxxxx, Tapas K. XxxXxxxx, Xxxxxxx S.H.L. Xxx, Xxxx Xxx Xxxxxxx, Xxxxxx Xxxx
Xxxxxxxxx, and Xxxxx Xxxx-Xxxxxx, of UNIVERSITY, (the "INVENTOR(S)"), have
produced inventions entitled "Betulinic Acid as Anti-Melanoma" (CN43), and/or,
"Semi-Synthesis of Betulinic Acid and Derivatives" (CQ15), and/or, "Use of
Betulinic Acid for Cancer Treatment" (CQ16), and/or, "Treatment and Prevention
of Human Melanoma with Betulinic Acid Derivatives" (CQ17) (collectively called
the "INVENTION");
WHEREAS, pursuant to assignments by the INVENTORS to UNIVERSITY of all
their right, title and interest in and to the INVENTION and any patents
resulting therefrom, UNIVERSITY is the owner of the INVENTION and the
corresponding Patent Rights, and has the right to grant licenses under said
Patent Rights;
WHEREAS, UNIVERSITY desires to have the Patent Rights utilized in the
public interest and is willing to grant a license to its interest thereunder;
WHEREAS, LICENSEE seeks to commercially develop the Patent Rights through a
thorough, vigorous and diligent program of exploiting the Patent Rights whereby
public utilization shall result therefrom; and
NOW, THEREFORE, in consideration of the premises and the mutual covenants
contained herein, the parties hereto agree as follows:
ARTICLE I - DEFINITIONS
For the purpose of this Agreement, the following words and phrases shall
have the following meanings:
1.1 "LICENSEE" shall mean Advanced Life Sciences.
1.2. "Affiliate" shall mean any person, firm, corporation or other
entity controlling, controlled by, or under common control with a party hereto.
The term "control" wherever used throughout this Agreement shall mean ownership,
directly or indirectly, of more than 50% of the
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equity capital. Other than LICENSEE, any corporation, company, partnership,
joint venture, firm, individual or other entity which does not come within this
definition shall be a "Non-Affiliate".
1.3 "Patent Rights" shall mean all of the following UNIVERSITY
intellectual property:
(a) the United States patent applications entitled " Method and
Composition for Selectively Inhibiting Melanoma Using Betulinic
Acid", filed in the United States Patent Office on March 3,
1995, and assigned Serial Number 08/407,756; "Methods of
Manufacturing Betulinic Acid", filed in the United States
Patent Office on March 27, 1997, and assigned Serial Number
08/826,217; "Method and Composition for Selectively Inhibiting
Melanoma Using Betulinic Acid", filed in the United States
Patent Office on May 16, 1997, and assigned Serial Number
08/858,011; "Method and Composition for Treating Cancers",
filed in the United States Patent Office on May 16, 1997, and
assigned Serial Number 08/857,413, and all foreign patent
applications based on this U.S. application;
(b) United States and foreign patents issued from this application,
and divisionals and continuations of this application;
(c) claims of U.S. and foreign continuation-in-part applications,
and of the resulting patents, which are directed to subject
matter specifically described in the U.S. patent applications
Serial Numbers as listed herein;
(d) any reissues or re-examinations of patents described in (a),
(b), or (c), above.
1.4 A "Licensed Product" shall mean any product or part thereof
developed by or on behalf of LICENSEE which:
(a) is covered in whole or in part by an issued, unexpired claim or
a pending claim contained in the Patent Rights in the country
in which any product is made, used or sold; or
(b) is manufactured by using a process which is covered in whole or
in part by an issued, unexpired claim or a pending claim
contained in the Patent Rights in the country in which any such
process is used or in which any such product is used or sold.
1.5 A "Licensed Process" shall mean any process which is covered in
whole or in part by an issued, unexpired claim or a pending claim contained in
the Patent Rights in any country in which such process is practiced.
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1.6 "Net Sales" shall mean LICENSEE's or Affiliate's xxxxxxxx for sales
of Licensed Products or Licensed Processes produced hereunder less the sum of
the following:
(a) discounts allowed in amounts customary in the trade;
(b) sales, tariff duties and/or use taxes directly imposed and with
reference to particular sales;
(c) outbound transportation prepaid or allowed;
(d) amounts allowed or credited on returns; and
(e) bad debts and uncollectible receivables.
No deductions shall be made for commissions paid to individuals whether
they be with independent sales agencies or regularly employed by LICENSEE of
Affiliates and on its payroll, or for cost of collections. Licensed Products
shall be considered "sold" when billed or invoiced.
1.7 "Sublicense" shall mean the right to make, use or sell Licensed
Products or Licensed Processes, other than by outright sale to any non-Affiliate
(including any non-Affiliated distributor).
1.8 "FIELD OF USE" shall mean the use of the INVENTION in the field of
human therapeutics.
1.9 "TERRITORY" shall mean the use of the INVENTION in the area of the
World.
ARTICLE II - GRANT
2.1 UNIVERSITY hereby grants to LICENSEE an exclusive worldwide right
and license in the FIELD OF USE and in the TERRITORY, including the right to
sublicense, to make, have made, use, lease and sell products, processes and
other applications which is or are covered by, embodied in, or derived from the
INVENTION, and/or the Patent Rights until the end of the last to expire patent
of the Patent Rights or until this Agreement shall be terminated, as hereinafter
provided, whichever occurs first, and subject to the rights reserved or observed
in Section 2.2 below.
2.2 Notwithstanding any other provisions of this Agreement, it is agreed
that UNIVERSITY shall retain the right to practice the licensed Patent Rights
for its own non-commercial teaching and research activities.
2.3 LICENSEE hereby agrees that every sublicensing agreement to which it
shall be party and which shall relate to the rights, privileges and license
granted hereunder shall contain a statement describing the date upon which
LICENSEE'S exclusive rights, privileges and license hereunder shall terminate.
2.4 LICENSEE agrees that any sublicenses granted by it shall provide
that the obligations to UNIVERSITY of Article III, Sections 3.1 and 3.2(c), V,
VII, VIII, IX, X, XII, and
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XIV 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
Articles to sublicense agreements.
2.5 LICENSEE agrees to forward to UNIVERSITY a copy of any and all fully
executed sublicense agreements, and further agrees to forward to UNIVERSITY
annually a copy of such reports received by LICENSEE from its sublicensees
during the preceding twelve (12) month period under the sublicenses as shall be
pertinent to a royalty accounting under said sublicense agreements.
2.6 If LICENSEE receives from sublicensees anything of value in lieu of
cash payments based upon payment obligations of any sublicense under this
Agreement, LICENSEE shall pay UNIVERSITY royalty income based on the fair market
value of such payment, unless UNIVERSITY waives in writing such payment
obligation.
2.7 The license granted hereunder shall not be construed to confer any
rights upon LICENSEE by implication, estoppel or otherwise as to any technology
not included in the Patent Rights.
ARTICLE III - DUE DILIGENCE
3.1 LICENSEE and its sublicensees shall use their best efforts to bring
Licensed Products or Licensed Processes to market through a thorough, vigorous
and diligent program for exploitation of the Patent Rights.
3.2 In addition, LICENSEE shall adhere to the following milestones:
(a) LICENSEE shall deliver to UNIVERSITY, within six months of the
date of execution of this Agreement, its detailed business,
research and development plan including relevant schedules of
capital investments needed to implement the plan, financial,
equipment and facility plans, number and kind of personnel and
time planned for each phase of development of the Patents
Rights for a three year period. Similar reports shall be
provided to UNIVERSITY annually to relay update and status
information on LICENSEE's business, research and development
progress, including projections of activity anticipated for the
next reporting year.
(b) LICENSEE shall be responsible for diligently and promptly
taking all reasonable steps to secure all required and/or
necessary governmental approvals to sell, exploit, or market
any and all Licensed Products. LICENSEE shall advise
UNIVERSITY, through annual reports to be provided after
December 31 of each year pursuant to Section 5.2 below, of its
program of development for and status of obtaining said
approvals. In the event UNIVERSITY, after full examination of
each such report,
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determines that the LICENSEE is not taking reasonable steps to
secure all required and/or necessary governmental approvals as
specified above, UNIVERSITY shall notify LICENSEE. If LICENSEE
fails to so satisfy UNIVERSITY, then UNIVERSITY shall give
notice of same and may terminate this Agreement pursuant to
Section 12.3 below.
(c) LICENSEE shall initiate at its expense, Phase I clinical trials
within three months of the approval of an Investigational New
Drug application (IND) by the U.S. Food and Drug Administration
(FDA).
3.3 LICENSEE's failure to perform in accordance with Sections 3.1 and
3.2 above shall be grounds for UNIVERSITY to terminate this Agreement pursuant
to Section 12.3 below.
ARTICLE IV - PAYMENTS
4.1 For the rights, privileges and licenses granted hereunder, LICENSEE
shall pay to the UNIVERSITY, in the manner hereinafter provided, until the end
of the last to expire patent of the Patent Rights or until this Agreement shall
be terminated, as hereinafter provided, whichever occurs first:
(a) a nonrefundable license issue fee of Fifteen Thousand Dollars
($15,000), payable immediately upon signing this Agreement;
(b) a royalty in an amount equal to six percent (6%) of the Net
Sales by LICENSEE or any Affiliate of the Licensed Products or
Licensed Processes;
(c) a royalty of six percent (6%) of Net Sales made by Sublicensee
and twenty percent (20%) of all income, other than Net Sales
based income, paid by Sublicensee to LICENSEE;
(d) milestone payments as follows: (i) Ten Thousand Dollars ($
10,000) upon the filing of an IND; (ii) Twenty Five Thousand
($25,000) upon the filing of a New Drug Application (NDA) from
the FDA for each Licensed Product for which LICENSEE receives a
NDA; (iii) One Hundred Thousand Dollars ($100,000) upon receipt
of a NDA from the Food and Drug Administration for each
Licensed Product for which LICENSEE receives a NDA; and
(e) during the term of this agreement, LICENSEE agrees to pay
UNIVERSITY annual Minimum Royalty Payments, starting after the
first sale of LICENSED PRODUCTS in the amount of Five Thousand
Dollars ($5,000) per Royalty Year.
(f) LICENSEE shall reimburse UNIVERSITY for patent costs pursuant
to ARTICLE VI, section 6.3, herein.
4.2 No multiple royalties shall be payable because any Licensed Product,
its manufacture, use, lease or sale are or shall be covered by more than one of
the Patent Rights
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patent applications or Patent Rights patents licensed under this Agreement, or
to be covered in more than one subsection of Section 4.1 hereof.
4.3 Royalty payments shall be paid in United States dollars in Chicago,
Illinois, or at such other place as UNIVERSITY may reasonably designate
consistent with applicable laws and regulations. If any currency conversion
shall be required in connection with the payment of royalties hereunder, such
conversion shall be made by using the exchange rate prevailing at the Chase
Manhattan Bank (N.A.) on the last business day of the calendar quarterly
reporting period to which such royalty payments relate.
ARTICLE V - REPORTS AND RECORDS
5.1 LICENSEE shall keep full, true and accurate books of account
containing all particulars that may be necessary for the purpose of showing the
amounts payable to UNIVERSITY hereunder. Said books of account shall be kept at
LICENSEE's principal place of business or at the principal place of business of
the appropriate Division of LICENSEE to which this Agreement relates. For the
term of this Agreement, upon receipt of thirty (30) days prior written notice,
LICENSEE shall allow UNIVERSITY or its agents to inspect such books and records
for the purpose of verifying LICENSEE's royalty statement or compliance in other
respects with this Agreement.
5.2 LICENSEE, within thirty (30) days after March 31, June 30, September
30, and December 31 of each year, shall deliver to UNIVERSITY true and accurate
reports, giving such particulars of the business conducted by LICENSEE and its
sublicensees during the preceding six-month period under this Agreement as shall
be pertinent to a royalty accounting hereunder. These shall include at least the
following, to be itemized per Licensed Product and Licensed Process:
(a) number of Licensed Products and Licensed Processes commercially
used, manufactured and sold, rented or leased;
(b) total xxxxxxxx for Licensed Products and Licensed Processes
commercially used, sold, rented or leased;
(c) deductions applicable as provided in Paragraph 1.6.
(d) total royalties due;
(e) names and addresses of all sublicensees of LICENSEE;
(f) total royalty income from all revenues subject to sublicensees'
royalties.
(g) total sublicensing fee income;
(h) total royalties due UNIVERSITY for royalties received from
sharing of income from sublicensees; and
(I) annually, the LICENSEE's certified financial statements for the
preceding twelve (12) months including, at a minimum, a Balance
Sheet and an Operating Statement, including full reporting of
insurance coverage obtained, as required by Section 8.2 below.
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5.3 With each such report submitted, LICENSEE shall pay to UNIVERSITY
the royalties due and payable under this Agreement. If no royalties shall be
due, LICENSEE shall so report.
5.4 On or before the ninetieth (90th) day following the close of
LICENSEE's fiscal year, LICENSEE shall provide UNIVERSITY with LICENSEE's
compiled financial statements as provided to its shareholders for the preceding
fiscal year including, at a minimum, a Balance Sheet and an Operating Statement.
ARTICLE VI - PATENT COSTS
6.1 UNIVERSITY shall diligently prosecute and maintain the Patent Rights
using counsel of its choice, in consultation with LICENSEE. The UNIVERSITY shall
provide LICENSEE with copies of all relevant documentation so that LICENSEE may
be informed and appraised of the continuing prosecution, and LICENSEE agrees to
keep this documentation confidential.
6.2 UNIVERSITY shall use its best efforts to amend any patent
application to include claims reasonably requested by LICENSEE and required to
protect the Licensed Products contemplated to be sold under this agreement.
6.3 LICENSEE shall be responsible for and pay a total of Fifty Thousand
Dollars ($50,000) for past costs and expenses incurred by UNIVERSITY for the
preparation, filing, prosecution, issuance, and maintenance of the Patent
Rights. LICENSEE shall pay UNIVERSITY for such past costs as follows: ten
thousand dollars ($10,000) upon license issuance and ten thousand dollars
($10,000) on the first, second, third and fourth anniversary dates of the
Effective Date. LICENSEE shall be responsible and pay for the preparation,
filing, prosecution, issuance, and maintenance of foreign Patent Rights incurred
by UNIVERSITY after October 14, 1999 and during the term of this Agreement. Such
payments shall be due within thirty (30) days of receipt of invoice from
UNIVERSITY.
ARTICLE VII - INFRINGEMENT
7.1 UNIVERSITY as owner of the Patent Rights shall control activities
related to enforcing the Patent Rights. LICENSEE as the exclusive commercial
user of the Patent Rights shall assume primary responsibility for enforcing the
Patent Rights within relevant commercial markets in the FIELD OF USE. In
exercising these responsibilities, LICENSEE shall promptly contact alleged third
party infringers and take all reasonable steps to persuade such third parties to
desist from infringing the Patent Rights, including initiating and prosecuting
an infringement action if necessary, or defending a challenge to the validity of
the Patent Rights. LICENSEE also shall notify UNIVERSITY of each instance of
alleged infringement and shall keep UNIVERSITY informed of all stages of Patent
Rights enforcement. LICENSEE may not use the name of UNIVERSITY as party
plaintiff without prior written consent of UNIVERSITY. All costs of any action
to enforce the Patent Rights taken by LICENSEE shall be borne by
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LICENSEE and LICENSEE shall keep any recovery of damages derived therefrom, the
excess of such recovery over such costs shall be included in LICENSEE's Net
Sales. No settlement, consent judgment or other voluntary final disposition of
the suit may be entered into without the consent of UNIVERSITY, which consent
shall not unreasonably be withheld.
7.2 During the term of this Agreement, UNIVERSITY shall have the right,
but shall not be obligated, to assume from LICENSEE the primary responsibility
of enforcing the Patent Rights or any individual case of alleged or actual
infringement. In such case UNIVERSITY shall notify LICENSEE in writing of its
intention to exercise this right, which will become effective within sixty (60)
days of LICENSEE's receiving such written notice. UNIVERSITY agrees to keep
LICENSEE informed of all stages of its enforcing. UNIVERSITY may use the name of
LICENSEE as party plaintiff. All costs of any action to enforce the Patent
Rights taken by UNIVERSITY shall be borne by UNIVERSITY and UNIVERSITY shall
share with LICENSEE any recovery of damages derived therefrom on a pro rata
basis per costs incurred by UNIVERSITY and LICENSEE respectively in such
policing activity.
7.3 In the event LICENSEE does not enforce the Patent Rights per section
7.1 above, UNIVERSITY shall inform LICENSEE in writing of same. UNIVERSITY may
terminate this Agreement within sixty (60) days of receipt by LICENSEE of such
notice pursuant to Article 12.3 below.
7.4 In any infringement suit as either party may institute to enforce
the Patent Rights against third parties pursuant to this Agreement, the other
party hereto shall, at the request and expense of the party initiating such
suit, cooperate in all respects and, to the extent possible, have its employees
testify when requested and make available relevant records, papers, information,
samples, specimens, and the like.
7.5 LICENSEE, during the exclusive period of this Agreement, shall have
the sole right in accordance with the terms and conditions herein to sublicense
any alleged infringer in the FIELD OF USE for future use of the Patent Rights,
with any royalty or up-front fees to be shared with UNIVERSITY as per Clause
4.1(c) above.
7.6 Each party shall promptly notify the other in writing in the event
that a third party shall bring a claim of infringement against UNIVERSITY or
LICENSEE, either in the United States or in any foreign country in which there
are Patent Rights. If the alleged infringement is so substantial as to threaten
the competitive position of LICENSEE and/or LICENSEE is temporarily enjoined
from exercise of its license hereunder, and if UNIVERSITY elects not to defend
against such claim and not to obtain a license to permit LICENSEE to exercise
its license free of such claim, then LICENSEE may in its own name and at its
sole expense defend such claim and may compromise, settle or otherwise pursue
such defense in such a manner and on such terms as LICENSEE shall see fit.
UNIVERSITY, at its own expense and through counsel of its selection may become a
party to such defense and/or settlement and compromise. In any event, UNIVERSITY
shall have the right to defend, at its own expense, any such third party
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claim or action and to settle or compromise the same in such manner as its shall
see fit. LICENSEE may participate in such litigation or claim on its behalf at
its own expense.
7.7 In the event LICENSEE is permanently enjoined from exercising its
license rights granted hereunder pursuant to an infringement action brought by a
third party, or if both LICENSEE and UNIVERSITY elect not to undertake the
defense or settlement of such a claim of alleged infringement for a period of
six months from notice of such claim or suit, then LICENSEE sole remedy shall be
to terminate this Agreement with respect to the infringing patent claims
following thirty (30) days' written notice to UNIVERSITY and in accordance with
the terms of Article XI hereof.
ARTICLE VIII - INDEMNIFICATION. PRODUCT LIABILITY
8.1 LICENSEE shall at all times during the term of this Agreement and
thereafter, indemnify, defend and hold UNIVERSITY, its trustees, officers,
employees and affiliates, harmless against all claims and expenses, including
legal expenses and reasonable attorneys' fees, arising out of the death of or
injury to any person or persons or out of any damage to property and against any
other claim, proceeding, demand, expense and liability of any kind whatsoever
resulting from the production, manufacture, sale, use, lease, consumption or
advertisement of the Licensed Product(s) and/or Licensed Process(es) or arising
from any obligation of LICENSEE hereunder.
8.2 For the term of this Agreement, upon the commencement of production,
sale, or transfer, whichever occurs first, of any Licensed Product or Licensed
Process, LICENSEE shall obtain and carry in full force and effect liability
insurance which shall protect LICENSEE and UNIVERSITY in regard to events
covered by Section 8.1 above, the nature and extent of which insurance coverage
shall be commensurate with usual and customary industry practices, as determined
by LICENSEE's good faith assessment.
8.3 Except as otherwise expressly set forth in this Agreement,
UNIVERSITY MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND,
EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, AND VALIDITY OF PATENT RIGHTS
CLAIMS, ISSUED OR PENDING.
ARTICLE IX - EXPORT CONTROLS
It is understood that UNIVERSITY is subject to United States Laws and
regulations controlling the export of technical data, computer software,
laboratory prototypes and other commodities (including the Arms Export Control
Act, as amended and the Export Administration Act of 1979), and that its
obligations hereunder are contingent on compliance with applicable United States
export laws and regulations. The transfer of certain technical data and
commodities may require a license from the cognizant agency of the United States
Government and/or written assurances by LICENSEE that LICENSEE shall not export
data or
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commodities to certain foreign countries without prior approval of such agency.
UNIVERSITY neither represents that a license shall not be required nor that, if
required, it shall be issued. LICENSEE shall be responsible for compliance with
any and all applicable United States or foreign export or import laws and
regulations.
ARTICLE X - NON-USE OF NAMES
LICENSEE shall not use the names of the University of
Illinois nor any of
its employees, nor any adaptation thereof, in any advertising, promotional or
sales literature without prior written consent obtained from UNIVERSITY in each
case, except that LICENSEE may state that it is licensed by UNIVERSITY under one
or more of the patents and/or applications comprising the Patent Rights and, if
appropriate, that research related to the Patent Rights is ongoing at
UNIVERSITY.
ARTICLE XI - ASSIGNMENT
11.1 This Agreement may not be assigned by LICENSEE without prior written
consent from UNIVERSITY and this consent shall not be unreasonably withheld.
11.2 Notwithstanding the foregoing prohibition, LICENSEE may without
UNIVERSITY's consent, merge into, consolidate with, or transfer substantially
all of its assets ("substantially" being respectively EIGHTY PERCENT (80%) or
more thereof) as an entirety to any corporation, so long as the successor
surviving corporation in any such merger, consolidation, transfer or
reorganization assumes in writing the obligations of this Agreement. Such
merger, consolidation, transfer or reorganization shall not in any way be a
breach of this Article XI, nor be any default under this Agreement.
ARTICLE XII - TERMINATION
12.1 UNIVERSITY may terminate this Agreement if LICENSEE becomes
insolvent or, a petition in bankruptcy is filed against LICENSEE and is
consented to, acquiesced in or remains undismissed for ninety (90) days; or
makes a general assignment for the benefit of creditors, or a receiver is
appointed for LICENSEE, and LICENSEE does not return to solvency before the
expiration of a thirty (30) day period.
12.2 Should LICENSEE fail to pay UNIVERSITY license fees, royalties and
patent expenses due and payable hereunder for more than sixty (60) days,
UNIVERSITY shall have the right to terminate this Agreement on thirty (30) days
written notice, unless LICENSEE shall pay UNIVERSITY within the ninety (90) day
period, all such license fees, royalties and patent expenses and interest due
and payable. Upon the expiration of the thirty (30) day period, if LICENSEE
shall not have paid all such royalties and interest due and payable, the rights,
privileges and license granted hereunder shall terminate, unless LICENSEE's
failure to pay arises from a bonafide dispute concerning royalties due, in which
case either of the parties may elect to pursue the alternative disputes
resolution provided by Section 12.6 below.
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12.3 Upon any material breach of this Agreement by LICENSEE, other than
those occurrences set out in Sections 12.1 and 12.2, including any faliure to
perform due diligence under Article III hereinabove, which shall always take
precedence in that order over any material breach or default referred to in this
Section 12.3, UNIVERSITY shall have the right to terminate this Agreement and
the rights, privileges and license granted hereunder by ninety (90) days' notice
to LICENSEE. Such termination shall become effective unless LICENSEE shall have
cured any such breach prior to the expiration of the ninety (90) day period.
12.4 LICENSEE shall be entitled to terminate this Agreement upon ninety
(90) days advance written notice to UNIVERSITY, in the event of UNIVERSITY's
material breach of any of the provisions of this Agreement, which breach is not
cured (if capable of being cured) within this ninety (90) day period, or if
conditions of Section 7.3 apply.
12.5 Upon termination of this Agreement for any reason, nothing herein
shall be construed to release either party from any obligation that matured
prior to the effective date of such termination. LICENSEE must return to
UNIVERSITY all materials containing Licensed Product; provided, however, that
LICENSEE shall have the right for one year thereafter to dispose of all Licensed
Products then in its inventory, and shall pay royalties thereon, in accordance
with the provisions of Article IV and shall submit the related reports as
required by Article V, as though this Agreement had not terminated.
12.6 Other than any claim arising from LICENSEE's failure to pay license
fees or patent expenses due under this contract, any controversy or bonafide
disputed claim arising between the parties to this Agreement, which dispute
cannot be resolved by mutual agreement shall, by the election of either party,
be resolved by submitting to dispute resolution before a fact-finding body
composed of one or more experts in the field, selected by mutual agreement
within thirty days of written request by either party. Said dispute resolution
shall be held in Chicago or at such other place as shall be mutually agreed upon
in writing by the parties. The fact-finding body shall determine who shall bear
the cost of said resolution. In the event that the parties cannot mutually agree
within said thirty (30) days on the dispute resolution body, the parties will
apply the procedural rules of a mutually agreeable forum.
ARTICLE XIII - PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
Any payment, notice or other communication pursuant to this Agreement shall
be sufficiently made or given on the date of mailing if sent to such party by
certified first class mail, postage prepaid, addressed to it at its address
below or as it shall designate by written notice given to the other party:
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In the case of UNIVERSITY:
The University of
Illinois at Chicago
Intellectual Property Office, OVCR (M/C 672)
310 AOB, 0000 Xxxx Xxxx Xxxxxx
Xxxxxxx, XX 00000-0000
Attn: Director
In the case of LICENSEE:
Advanced Life Sciences
00000 X. Xxx Xxxxxx
Xxxxxx, XX 00000
Attn: Xxxxxxx Xxxxxx, Ph.D.
President
ARTICLE XIV - MISCELLANEOUS PROVISIONS
14.1 This Agreement shall be construed, governed, interpreted and applied
in accordance with the laws of the State of
Illinois, U.S.A., except that
questions affecting the construction and effect of any patent shall be
determined by the law of the country in which the patent was granted.
14.2 The parties hereto acknowledge that this Agreement sets forth the
entire Agreement and understanding of the parties hereto as to the subject
matter hereof, and shall not be subject to any change or modification except by
the execution of a written instrument subscribed to by the parties hereto.
14.3 The provisions of this Agreement are severable, and in the event
that any provisions of this Agreement shall be determined to be invalid or
unenforceable under any controlling body of the law, such invalidity or
unenforceability shall not in any way affect the validity or enforceability of
the remaining provisions hereof.
14.4 LICENSEE agrees to xxxx the Licensed Products sold in the United
States with all applicable United States patent numbers. All Licensed Products
shipped to or sold in other countries shall be marked in such a manner as to
conform with the patent laws and practice of the country of manufacture or sale.
14.5 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 subsequent failure to
perform any such term or condition by the other party.
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14.6 This Agreement may be executed in any number of counterparts and
each of such counterparts shall for all purposes be an original and all such
counterparts shall together constitute but one and the same agreement.
IN WITNESS WHEREOF, the parties have hereunto set their hands and seals and
duly executed this Agreement the day and year set forth below.
THE BOARD OF TRUSTEES OF THE UNIVERSITY OF
ILLINOIS
By /s/ Xxxxx X. Xxxxxxx Date 12/2/99
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Xxxxx X. Xxxxxxx, Comptroller
APPROVED
By /s/ Xxxxxxx X. Xxxxxxxx Date 12-2-99
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Xxxxxxx X. Xxxxxxxx, Secretary
/s/ Xxxx X. Xxxxxxx Xxxxxxxx 12-2-99
---------------------------- -------
Xxxx X. Xxxxxxx Xxxxxxxx Date
Director
Intellectual Property Office
FOR ADVANCED LIFE SCIENCES
By /s/ Xxxxxxx X. Xxxxxx Date 12/6/99
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Printed Name XXXXXXX X. XXXXXX
------------------------
Its PRESIDENT
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(Official Title)
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