LICENSE AGREEMENT
Effective as of March 28, 2000 ("Effective Date") The Xxxxx Xxxxxxx University,
a corporation of the State of Maryland, having a principal place of business at
0000 Xxxxx Xxxxxxx Xxxxxx, Xxxxxxxxx, XX 00000 (hereinafter referred to as
"JHU") and Zorax, Inc., a Florida Corporation and a wholly owned subsidiary of
UTEK Corporation, a Delaware Corporation, having a principal place of business
at 000 Xxxxx Xxxxxxx Xxxxxx, Xxxxx Xxxx, Xxxxxxx 33566(hereinafter the
"Company") agree as follows:
ARTICLE 1 -- BACKGROUND
1.1 JHU has an assignment of "Apparatus for the Separation of Cystic
Parasite Forms From Water", inventors X.X. Xxxxx and X.X.Xxxxxxx
("Invention[s]"), as described in JHU Docket 1304, US Serial
# 09/006,999, filed 1 /14/98, and any Licensed Patent(s), as
hereinafter defined, which may issue to such Invention(s).
1.2 JHU has certain technical data and information as herein defined
("Technology") pertaining to Invention(s).
1.3 JHU has acquired through assignment all rights, title and interest,
with the exception of certain retained rights by the United States
government, in said valuable invention; and
1.4 JHU, as a center for research and education, JHU desires to have the
Technology and Invention(s) perfected and marketed at the earliest
possible time in order that products resulting therefrom may be
available for public use and benefit.
1.5 JHU is interested in licensing PATENT RIGHTS (hereinafter defined) in a
manner that will benefit the public by facilitating the distribution of
useful products and the utilization of new methods, but is without
capacity to commercially develop, manufacture, and distribute any such
products or methods.
1.6 Company desires a license under said Technology, Invention(s) and
Licensed Patent(s) to develop, manufacture, use and distribute such
products and processes throughout the world in all fields of use.
NOW, THEREFORE, in consideration of the foregoing premises and the following
mutual covenants, and other good and valuable consideration, the receipt of
which is hereby acknowledged, and intending to be legally bound hereby, the
parties agree as follows:
ARTICLE 2 - DEFINITIONS
2.1 "PATENT RIGHTS" shall mean the U.S. Patent Application Serial No.
09/006,999, entitled"Apparatus for the Separation of Cystic Parasite
Forms From Water", inventors X.X. Xxxxx and X.X.Xxxxxxx and assigned to
JHU (hereinafter the "PATENT APPLICATION") and the invention disclosed
and claimed therein, and all continuations, divisions, and reissues
based thereof, and any corresponding foreign patent applications, and
any patents, patents of addition, or other equivalent foreign patent
rights issuing, granted or registered thereon.
2.2 "TECHNOLOGY" means existing technical data and information, including,
but not limited to, the
information contained in the Patent Application pertaining to the
Invention(s) and provided to the Company whether or not it is of a
confidential nature.
2.3 "LICENSED PRODUCT(S)" means any product or part thereof in the Licensed
Field of Use, the manufacture, use or sale of which:
a. would constitute, but for the license granted to the Company
pursuant to this Agreement, an infringement of a claim of
PATENT RIGHTS (infringement shall include, but is not limited
to, direct, contributory, or inducement to infringe).
b. incorporates any of the Technology.
2.4 "NET SALES", subject to Paragraph 6.5, below, shall mean gross revenues
and fees billed by Company, AFFILIATED COMPANY and Company's
sublicensees from the sale of LICENSED PRODUCT(S), whether or not
assembled (and without excluding therefrom any components or
subassemblies thereof, whatever their origin and whether or not it
falls within the scope of a claim), less the following items but only
insofar as they actually pertain to the disposition of such Licensed
Product(s) by Company, AFFILIATED COMPANY or Company's sublicensee(s),
are included in such gross revenue, and are separately billed:
a. Import, export, excise and sales taxes, and custom duties;
b. Costs of insurance, packaging, and transportation from the
place of manufacture to the customer's premises or point of
installation;
c. Costs of installation at the place of use; and
d. Credit for returns, allowances, or trade discounts.
In the event that Company, AFFILIATED COMPANY or Company's sublicensee sells a
LICENSED PRODUCTS) in combination with other ingredients or substances, the NET
SALES for purposes of royalty payments shall be based on the sales revenues and
fees received from the entire combination.
2.5 "AFFILIATED COMPANY" or "AFFILIATED COMPANIES" shall mean any
corporation, company, partnership, joint venture or other entity which
controls, is controlled by or is under common control with the Company.
For purposes of this Paragraph 2.5, control shall mean the direct or
indirect ownership of at least fifty percent (50%).
2.6 "EXCLUSIVE LICENSE" shall mean a grant by JHU to Company of its entire
right and interest in the PATENT RIGHTS, subject to rights retained by
the United States government in accordance with P.L. 96-517, as amended
by P.L. 98-620, and subject to the retained right of JHU to make, have
made, provide and use for its' non-profit purposes LICENSED PRODUCT(S).
ARTICLE 3 - GRANTS
3.1 Subject to the terms and conditions of this Agreement, JHU hereby
grants and Company hereby accepts, an EXCLUSIVE LICENSE, with the right
to sublicense others pursurant to Article 9, to make, have made, use,
sell, and import the LICENSED PRODUCTS) in the United States and
worldwide underthe PATENT RIGHTS.
3.2 Company may sublicense others under this Agreement, subject to Article
9, and shall provide a copy of each such sublicense agreement to JHU
promptly after it is executed. Each sublicense shall be consistent with
the terms of this Agreement.
3.3 JHU shall have the right to practice the Invention(s) and use the
Technology for its own bona fide research, including sponsored research
and collaborations. JHU shall have the right to publish any information
included in Technology and Licensed Patent(s).
ARTICLE 4 - GOVERNMENT RIGHTS
This Agreement is subject to all of the terms and conditions of Xxxxx 00 Xxxxxx
Xxxxxx Code Sections 200-204, including an obligation that Licensed Product(s)
sold or produced in the United States be "manufactured substantially in the
United States," and Company agrees to take all reasonable action necessary on
its part as licensee to enable JHU to satisfy its obligation thereunder,
relating to Invention(s).
ARTICLE 5 - PATENT INFRINGEMENT
5.1 Each party will notify the other promptly in writing when any
infringement by another is uncovered or suspected.
5.2 Company shall have the first right to enforce any patentwithin PATENT
RIGHTS against any infringement or alleged infringement thereof, and
shall at all times keep JHU informed as to the status thereof. Company
may, in its sole judgment and at its own expense, institute suit
against any such infringer or alleged infringer and control, settle,
and defend such suit in a manner consistent with the terms and
provisions hereof and recover, for its account, any damages, awards or
settlements resulting therefrom, subject to Paragraph 5.4. This right
to xxx for infringement shall not be used in an arbitrary or capricious
manner. JHU shall reasonably cooperate in any such litigation at
Company's expense.
5.3 If Company elects not to enforce any patent within the PATENT RIGHTS,
then it shall so notify JHU in writing within six (6) months of
receiving notice that an infringement exists, and JHU may, in its sole
judgment and at its own expense, take steps to enforce any patent and
control, settle, and defend such suit in a manner consistent with the
terms and provisions hereof, and recover, for its own account, any
damages, awards or settlements resulting therefrom.
5.4 Any recovery by Company under Paragraph 5.2 shall be deemed to reflect
loss of commercial sales, and Company shall pay to JHU fifteen percent
(15%) of the recovery net of all reasonable costs and expenses
associated with each suit or settlement. If the cost and expenses
exceed the recovery, then one-half (1/2) of the excess shall be
credited against royalties payable by Company to JHU hereunder in
connection with sales in the country of such legal proceedings,
provided, however, that any such credit under this Paragraph 5.4 shall
not exceed fifty percent (50%) of the royalties otherwise payable to
JHU with regard to sales in the country of such action in any one
calendar year, with any excess credit being carried forward to future
calendar years.
ARTICLE 6 - PAYMENTS, ROYALTY, REPORTS
6.1 Company shall reimburse JHU for the reasonable costs of preparing,
filing, maintaining and prosecuting PATENT RIGHTS incurred after the
Effective Date of this Agreement. Company shall
reimburse JHU within thirty (30) days of receipt of invoice from JHU.
6.2 Company shall pay JHU fifteen thousand dollars ($15,000) within 30 days
of the Effective Date of this Agreement as the up-front fee for the
exclusive license to this TECHNOLOGY.
6.3 Company shall pay to JHU earned royalties of two and one half percent
(2.5%) of NET SALES for the term of this Agreement. Such payments shall
be made quarterly as provided in Paragraph 6.6.
6.4 Company shall pay the following minimum royalties beginning 24 months
after the Effective Date:
6.4.1 3rd anniversary: $3,000
6.4.2 4th anniversary: $3,500
6.4.3 5th anniversary: $4,000
6.4.4 6th anniversary: $4,500
6.4.5 7th anniversary and each anniversary thereafter until the end
of patent life: $5,000.
6.5 Company shall provide Zorax, Inc common stock equal to 9% of currently
outstanding shares (as of the Effective Date).
6.5.1 In the event that Zorax is sold. TM will agree to sell their shares to
the acquirer and in consideration JHU will receive 9% of the total
consideration issued for all of Zorax's shares.
6.6 The Company shall provide to JHU within thirty (30) days of the end of
each March; June, September and December after the EFFECTIVE DATE of
this Agreement, a written report to JHU of the amount of LICENSED
PRODUCTS sold, the total NET SALES of such LICENSED PRODUCTS and the
earned royalties due to JHU as a result of NET SALES by Company,
AFFILIATED COMPANIES and sublicensees thereof. Payment of any such
royalties due shall accompany such report.
Until the Company, an AFFILIATED COMPANY or a sublicensee has achieved a first
commercial sale of a LICENSED PRODUCT, a report shall be submitted at the end of
every June and December after the EFFECTIVE DATE of this Agreement. Such report
shall include, as a minimum, information sufficient to enable JHU to satisfy
reporting requirements of the US Government and for JHU to ascertain progress by
Company's, AFFILIATED COMPANIES or sublicensee's technical efforts towards
meeting the diligence requirements in Article 8.
6.7 Company shall make and retain, for a period of three (3) years
following the period of each report required by Paragraph 6.4 true and
accurate records, files and books of account containing all the data
reasonably required for the full computation and verification of sales
and other information required in Paragraph 6.4. Such books and records
shall be in accordance with generally accepted accounting principles
consistently applied. The Company shall permit the inspection and
copying of such records, files and books of account by JHU or its
agents during regular business hours upon two (2) business days'
written notice to the Company. Such inspection shall not be made more
than once each calendar year. All costs of such inspection and copying
shall be paid by JHU, provided that if any such inspection shall reveal
that an error has been made in the amount equal to five percent (5%) or
more of such payment, such costs shall be borne by the Company. The
Company shall include in any agreement with its AFFILIATED COMPANIES or
its sublicensees which permits such party to make, use or sell the
LICENSED PRODUCTS) or provide LICENSED SERVICES, a provision requiring
such party to retain records of sales of LICENSED PRODUCTS)
and records of LICENSED SERVICES and other information as required in
Paragraph 6.4 and permit JHU to inspect such records as required by
this Paragraph 6.5.
6.8 In order to insure JHU the full royalty payments contemplated
hereunder, the Company agrees that in the event any LICENSED PRODUCT
shall be sold to an AFFILIATED COMPANY or sublicensee or to a
corporation, firm or association with which Company shall have any
agreement, understanding or arrangement with respect to consideration
(such as, among other things, an option to purchase stock or actual
stock ownership, or an arrangement involving division of profits or
special rebates or allowances) the royalties to be paid hereunder for
such LICENSED PRODUCTS shall be based upon the greater of: 1) the net
selling price at which the purchaser of LICENSED PRODUCTS resells such
product to the end user, 2) the net service revenue received from using
the LICENSED PRODUCT in providing a service, 3) the fair market value
of the LICENSED PRODUCT or 4) the net selling price of LICENSED
PRODUCTS paid by the purchaser.
6.9 All payments under this Agreement shall be made in U.S. Dollars.
ARTICLE 7 - PATENT RIGHTS AND CONFIDENTIAL INFORMATION
7.1 JHU, at the Company's expense, shall file, prosecute and maintain all
patents and patent applications specified under PATENT RIGHTS upon
authorization of the Company and the Company shall be licensed
thereunder. Title to all such patents and patent applications shall
reside in JHU. JHU shall have full and complete control over all patent
matters in connection therewith under the PATENT RIGHTS. The Company
will provide payment authorization to JHU at least one (1) month before
an action is due, provided that the Company has received timely notice
of such action from JHU. Failure to provide authorization can be
considered by JHU as a Company decision not to authorize an action. In
any country where the Company elects not to have a patent application
filed or to pay expenses associated with filing, prosecuting, or
maintaining a patent application or patent, JHU may file, prosecute,
and/or maintain a patent application or patent at its own expense and
for its own exclusive benefit and the Company thereafter shall not be
licensed under such patent or patent application.
7.2 Company agrees that all packaging containing individual LICENSED
PRODUCT(S) sold by Company, AFFILIATED COMPANIES and sublicensees of
Company will be marked with the number of the applicable patent(s)
licensed hereunder in accordance with each country's patent laws.
7.3 If necessary, the parties will exchange information which they consider
to be confidential. The recipient of such information agrees to accept
the disclosure of said information which is marked as confidential at
the time it is sent to the recipient, and to employ all reasonable
efforts to maintain the information secret and confidential, such
efforts to be no less than the degree of care employed by the recipient
to preserve and safeguard its own confidential information. The
information shall not be disclosed or revealed to anyone except
employees of the recipient who have a need to know the information and
who have entered into a secrecy agreement with the recipient under
which such employees are required to maintain confidential the
proprietary information of the recipient and such employees shall be
advised by the recipient of the confidential nature of the information
and that the information shall be treated accordingly. The recipient's
obligations under this Paragraph 7.3 shall not extend to any part of
the information:
a. that can be demonstrated to have been in the public domain or
publicly known and readily available to the trade or the
public prior to the date of the disclosure; or
b. that can be demonstrated, from written records to have been in
the recipient's possession or readily available to the
recipient from another source not under obligation of secrecy
to the disclosing party prior to the disclosure; or
c. that becomes part of the public domain or publicly known by
publication or otherwise, not due to any unauthorized act by
the recipient; or
d. that is demonstrated from written records to have been
developed by or for the receiving party without reference to
confidential information disclosed by the disclosing party.
The obligations of this Paragraph 7.3 shall also apply to AFFILIATED COMPANIES
and/or sublicensees provided such information by Company. JHU's, the Company's,
AFFILIATED COMPANIES, and sublicensees' obligations under this Paragraph 7.3
shall extend until three (3) years after the termination of this Agreement.
ARTICLE 8 - TERM DILIGENCE. MILESTONES AND TERMINATION
8.1 This Agreement shall expire in each country on the date of expiration
of the last to expire patent included within PATENT RIGHTS in that
country or if no patents issue seventeen (17) years from the Effective
Date of this Agreement.
8.2 Zorax has the right to terminate this Agreement with 60 days written
notice to JHU, providing all monies owed to JHU as of the date of
notice of Termination have been fully paid to JHU. In the event of
Termination, all rights to JHU TECHNOLOGY will revert back to JHU.
8.3 As an inducement to JHU to enter into this Agreement, Company agrees to
use best efforts to proceed with the development, manufacture, and sale
or lease of Licensed Product(s) and to diligently develop markets for
the LICENSED PRODUCT(S). To this end, Company shall meet the following
milestones:
(A) Company shall invest at least $30,000 in developing the
Technology within the first 12 months after the Execution
Date.
(B) Company shall supply JHU with a business development plan
reasonably acceptable to JHU with concrete product development
and marketing milestones delineated within 60 days of the
first anniversary of this Agreement. Should company fail to
provide such a plan or meet the milestones in the plan, JHU
shall have the right to immediately terminate this Agreement.
8.4 After first commercial sale, Company shall exercise its best efforts to
market a product included in LICENSED PRODUCTS in the U.S. and
worldwide.
8.5 After evidence, provided in writing by JHU or by another party, to
Company, demonstrates the practicality of a particular application of
the Technology which is not being developed or commercialized by
Company, Company shall either provide JHU with a reasonable development
plan and start development or attempt to reasonably sublicense the
particular technology to a third party. If within six (6) months of
such notification by JHU, Company has not initiated such development
efforts or sublicensed that particular application of the Technology,
JHU may terminate this license for such particular application. This
Paragraph 8.4 shall not be applicable if Company
reasonably demonstrates to JHU that commercializing such LICENSED
PRODUCTS) or granting such a sublicense would have a potentially
adverse commercial effect upon marketing or sales of the LICENSED
PRODUCTS developed and being sold by Company.
8.6 Upon breach or default of any of the terms and conditions of this
Agreement, the defaulting party shall be given written notice of such
default in writing and a period of sixty (60) days after receipt of
such notice to correct the default or breach. If the default or breach
is not corrected within said sixty (60) day period, the party not in
default shall have the right to terminate this Agreement. Failure to
meet any of the milestones in paragraph 8.2 shall be considered a
breach.
8.7 Termination shall not affect JHU's right to recover unpaid royalties or
fees or reimbursement for patent expenses incurred pursuant to
Paragraph 7.1 prior to termination. Upon termination all rights in and
to the licensed technology shall revert to JHU at no cost to JHU.
ARTICLE 9 - NEGATION OF WARRANTIES
JHU does not warrant the validity of any patents or that practice under such
patents shall be free of infringement of patents, copyrights, and other rights
of third parties. EXCEPT AS EXPRESSLY SET FORTH IN THIS ARTICLE 9, COMPANY,
AFFILIATED COMPANIES AND SUBLICENSEES AGREE THAT THE PATENT RIGHTS ARE PROVIDED
"AS IS", AND THAT JHU MAKES NO REPRESENTATION OR WARRANTY WITH RESPECT TO THE
PERFORMANCE OF LICENSED PRODUCTS) AND LICENSED SERVICES INCLUDING THEIR SAFETY,
EFFECTIVENESS, OR COMMERCIAL VIABILITY.
JHU DISCLAIMS ALL WARRANTIES WITH REGARD TO PRODUCTS) AND SERVICES LICENSED
UNDER THIS AGREEMENT, INCLUDING, BUT NOT LIMITED TO, ALL WARRANTIES, EXPRESS OR
IMPLIED, OF MERCHANTABILITY AND FITNESS FOR ANY PARTICULAR PURPOSE.
NOTWITHSTANDING ANY OTHER PROVISION OF THIS AGREEMENT, JHU ADDITIONALLY
DISCLAIMS ALL OBLIGATIONS AND LIABILITIES ON THE PART OF JHU AND INVENTORS, FOR
DAMAGES, INCLUDING, BUT NOT LIMITED TO, DIRECT, INDIRECT, SPECIAL, AND
CONSEQUENTIAL DAMAGES, ATTORNEYS' AND EXPERTS' FEES, AND COURT COSTS (EVEN IF
JHU HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES, FEES OR COSTS), ARISING
OUT OF OR IN CONNECTION WITH THE MANUFACTURE, USE, OR SALE OF THE PRODUCTS) AND
SERVICES LICENSED UNDER THIS AGREEMENT. COMPANY, AFFILIATED COMPANIES AND
SUBLICENSEES ASSUME ALL RESPONSIBILITY AND LIABILITY FOR LOSS OR DAMAGE CAUSED
BY A PRODUCT AND SERVICE MANUFACTURED, USED, OR SOLD BY COMPANY, ITS
SUBLICENSEES AND AFFILIATED COMPANIES WHICH IS A LICENSED PRODUCT OR LICENSED
SERVICE AS DEFINED IN THIS AGREEMENT.
Nothing in this Agreement shall be construed as:
2. an obligation to bring or prosecute actions or suits against third
parties for infringement, except to the extent and in the circumstances
described in Article 12.
3. Granting, by implication or estoppel, or otherwise any licenses or
rights under patents or other rights of JHU or other persons other than
Licensed Patent(s), regardless of whether such patents or
other rights are dominant or subordinate to any Licensed Patent(s); or
4. An obligation to furnish any technology or technological information
other than the Technology.
ARTICLE 9 -- SUBLICENSE
9.1 Company may sublicense others under this Agreement and shall provide a
copy of each such sublicense agreement to JHU promptly after it is
executed. Each sublicense shall be consistent with the terms of this
Agreement.
9.2 If Company is unable or unwilling to serve or develop a potential
market or market territory for which there is a willing sublicensee(s),
Company will, at JHU's request, negotiate in good faith a sublicense(s)
hereunder.
9.3 Any sublicense(s) granted by LICENSEE under this Agreement shall be
subject and subordinate to terms and conditions of this Agreement,
except:
a. Sublicense terms and conditions shall reflect that any
sublicensee(s) shall not further sublicense;
and
b. The earned royalty rate specified in the sublicense(s) may be
at higher rates than the rates in this Agreement.
Any such sublicense(s) also shall expressly include the provisions of Articles
17.2. 7.3. 8.4. 8.7 and 9) forthe benefit of JHU and provide for the transfer of
all obligations, including the payment of royalties specified in such
sublicense(s), to JHU or its designee, in the event that this Agreement is
terminated.
9.4 Company must provide JHU with 1.25% royalty on Net Sales of all
products sold by its sublicensee(s) which incorporate LICENSED
TECHNOLOGY
ARTICLE 10 -MISCELLANEOUS
10.1 All notices pertaining to this Agreement shall be in writing and sent
certified mail, return receipt requested, to the parties at the
following addresses or such other address as such party shall have
furnished in writing to the other party in accordance with this
Paragraph 10.1:
FOR JHU: Xxxx X. Xxxxxxx, C.F.A.
Director, Office of Technology Transfer
Xxxxx Xxxxxxx University
708 X. Xxxxx Park Center
0000 X. Xxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
Phone: (000) 000-0000
FAX: (000) 000-0000
E-mail: xxx@xxx.xxx
FOR Company: Xxx Xxxxxxx, M.D., Ph.D.
President
Zorax, Inc.
000 Xxxxx Xxxxxxx Xxxxxx
Xxxxx Xxxx, XX 0000
Phone: (000) 000-0000
FAX: (000) 000-0000
E-mail: xxxxxxxx@xxxxxxxx.xxx
10.2 All written progress reports, royalty and other payments, and any other
related correspondence shall be in writing and sent to:
FOR JHU: Xxxx X. Xxxxxxx, C.F.A.
Director, Office of Technology Transfer
Xxxxx Xxxxxxx University
708 X. Xxxxx Park Center
0000 X. Xxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
Phone: (000) 000-0000
FAX: (000) 000-0000
E-mail: xxx@xxx.xxx
or such other addressee which JHU may designate in writing from time to time.
Checks are to be made payable to "Xxxxx Xxxxxxx University".
10.3 This Agreement is binding upon and shall inure to the benefit of JHU,
its successors and assignees and shall not be assignable to another
party without the written consent of JHU, which consent shall not be
unreasonably withheld, except that the Company shall have the right to
assign this Agreement to another party without the consent of JHU in
the case of the sale or transfer by the Company of all, or
substantially all, of its assets relating to the LICENSED PRODUCT or
LICENSED SERVICE, to that party.
10.4 In the event that any one or more of the provisions of this Agreement
should for any reason be held by any court or authority having
jurisdiction over this Agreement, or over any of the parties hereto to
be invalid, illegal or unenforceable, such provision or provisions
shall be reformed to approximate as nearly as possible the intent of
the parties, and if unreformable, shall be divisible and deleted in
such jurisdictions; elsewhere, this Agreement shall not be affected.
10.5 The construction, performance, and execution of this Agreement shall be
governed by the laws of the State of Maryland.
10.6 The Company shall not use the name of THE XXXXX XXXXXXX UNIVERSITY or
THE XXXXX XXXXXXX HEALTH SYSTEM or THE XXXXX XXXXXXX SCHOOL OF HYGIENE
AND PUBLIC HEALTH or any of its constituent parts or any contraction
thereof or the name of inventors of PATENT RIGHTS in any advertising,
promotional, sales literature or fundraising documents without prior
written consent from JHU. Company shall allow at least seven (7)
business days notice of any proposed public disclosure for JHU's review
and comment or to provide written consent.
10.7 JHU warrants that it has good and marketable title to its interest in
the inventions claimed under
PATENT RIGHTS with the exception of certain retained rights of the
United States government.
10.8 JHU and the inventors of LICENSED PRODUCTS) will not, under the
provisions of this Agreement or otherwise, have control over the manner
in which Company or its AFFILIATED COMPANIES or its sublicensees or
those operating for its account or third parties who purchase LICENSED
PRODUCTS) from any of the foregoing entities, practice the inventions
of LICENSED PRODUCT(S). Company shall defend and hold JHU, and its
constituent parts, their present and former regents, trustees,
officers, inventors of PATENT RIGHTS, agents, faculty, employees and
students harmless as against any judgments, fees, expenses, or other
costs arising from or incidental to any product liability or other
lawsuit, claim, demand or other action brought as a consequence of the
practice of said inventions by any of the foregoing entities, whether
or not JHU or said inventors, either jointly or severally, is named as
a party defendant in any such lawsuit. Practice of the inventions
covered by LICENSED PRODUCTS) by an AFFILIATED COMPANY or an agent or a
sublicensee or a third party on behalf of or for the account of Company
or by a third party who purchases LICENSED PRODUCTS) from the Company,
shall be considered Company's practice of said inventions for purposes
of this Paragraph 10.8. The obligation of Company to defend and
indemnify as set out in this Paragraph 10.8 shall survive the
termination of this Agreement.
10.9 Prior to first commercial sale of any LICENSED PRODUCT as the case may
be in any particular country, Company shall establish and maintain, in
each country in which Company, an AFFILIATED COMPANY or sublicensee
shall test or sell LICENSED PRODUCT(S), product liability or other
appropriate insurance coverage appropriate to the risks involved in
marketing LICENSED PRODUCTS) and will annually present evidence to JHU
that such coverage is being maintained. Upon JHU's request, Company
will furnish JHU with a Certificate of Insurance of each product
liability insurance policy obtained and agrees to increase or change
the kind of insurance pertaining to the LICENSED PRODUCTS) at the
request of JHU. JHU shall be listed as an additional insured in
Company's said insurance policies.
10.10 JHU may publish manuscripts, abstracts or the like describing the
PATENT RIGHTS and inventions contained therein provided confidential
information of Company as defined in Paragraph 7.3, is not included or
without first obtaining approval from the Company to include such
confidential information. Otherwise, JHU and the inventors shall be
free to publish manuscripts and abstracts or the like directed to the
work done at JHU related to the licensed technology without prior
approval.
10.11 This Agreement constitutes the entire understanding between the parties
with respect to the obligations of the parties with respect to the
subject matter hereof, and supersedes and replaces all prior
agreements, understandings, writings, and discussions between the
parties relating to said subject matter.
10.12 This Agreement maybe amended and any of its terms or conditions maybe
waived only by a written instrument executed by the authorized
officials of the parties or, in the case of a waiver, by the party
waiving compliance. The failure of either party at anytime or times to
require performance of any provision hereof shall in no manner affect
its right at a later time to enforce the same. No waiver by either
party of any condition or term in any one or more instances shall be
construed as a further or continuing waiver of such condition or term
or of any other condition or term.
10.13 This Agreement shall be binding upon and inure to the benefit of and be
enforceable by the parties hereto and their respective successors and
permitted assigns.
IN WITNESS WHEREOF the respective parties hereto have executed this Agreement by
their duly authorized officers on the date appearing below their signatures.
XXXXX XXXXXXX UNIVERSITY ZORAX, Inc.
By: By:
--------------------------------- --------------------------------
Xxxxxxxx X. Xxxxxxx, Ph.D. Xxx Xxxxxxx, M.D., Ph.D.
Vice Xxxxxxx for Research President
Date: Date:
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I have read and agree to abide by the terms of this Agreement
By: By:
--------------------------------- --------------------------------
Dr.: Dr.:
-------------------------------- -------------------------------
Date: Date:
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