LICENSE AGREEMENT
THIS AGREEMENT, effective the 9th day of April 1998, is between "GENTEST", INC.,
a Florida corporation, ("GENTEST"), located at ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇▇, and the University of South Florida Research Foundation, Inc.,
("USFRF') a not for profit corporation under Florida law and a university direct
support organization of the University of South Florida ("USF").
Introduction
WHEREAS, GENTEST will actively be involved in the merchandising and the
development of test kits for the screening of colon, ovarian and testicular
cancer.
WHEREAS, USF has developed a concept (defined hereinafter as USF Technology) for
the diagnosis of selected adenocarcinomas as set forth in US Patent Application
No. 08/919.421.
WHEREAS, GENTEST wants USF to conduct research on the development of laboratory
test kits, and desires a license to use the results of USF's research conducted
pursuant to this Agreement and USF technology.
WHEREAS, USFRF is the exclusive licensor of USF Technology and is willing to
grant GENTEST an exclusive license to use USF Technology and other USF research
results devised pursuant to this Agreement, on the terms and conditions therein;
and
WHEREAS, USFRF believes it is in the public interest to grant GENTEST the
license set forth below.
NOW, THEREFORE, in consideration of the premises and mutual covenants set forth
herein, and intending to be legally bound, the parties agree as follows:
I. Definitions
A. "USF Patent Rights" shall mean the USF Patent Applications
listed in Exhibit A and any successor application, domestic or
foreign resulting therefrom, any US or foreign patents issuing
therefrom, and any results of research supported by GENTEST
and which relates to cancer screening.
B. "USF Technology" shall mean the method for the diagnosis of
selected adenocarcinomas and the development of test kit(s)
for cancer screening and the uses thereof disclosed in USF
Patent Rights and USF know-how related directly thereto.
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C. "Licensed Product" shall mean any GENTEST product, system
and/or process in which USF Technology is used, and other uses
of cancer screening for which USF conducts research pursuant
to this Agreement.
D. To "Commercially Exploit" or "Commercial Exploitation" of a
Licensed Product shall mean to provide the Licensed Product to
a customer, in exchange for valuable consideration.
E. "Revenue" for a Licensed Product shall mean consideration
due or paid to GENTEST for GENTEST's providing of a Licensed
Product to a customer.
F. "Territory" shall mean Worldwide.
II. Grant
Subject to USFRF's retained rights and covenants set forth in Section VIII
below, GENTEST is granted the exclusive right and license to Commercially
Exploit Licensed Products in the Territory.
III. Best Efforts
GENTEST shall use its best efforts to develop and Commercially Exploit
Licensed Products in the Territory.
IV. Research Fees, License Fees and Running Royalties
GENTEST agrees to pay license fees, research fees, and running
royalties (all payable to USFRF) as follows:
A. Initial License fee of One Hundred Thousand Dollars ($100,000.00)
payable within ninety (90) days after execution of this License
Agreement.
B. To the extent consistent with USF rules and polices and Florida
Law, GENTEST will engage USFRF to conduct a cancer research
project as set forth in Exhibit B. The purpose of this research
project is to develop test kits for the screening of colon,
ovarian and testicular cancer. ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇, M. D., of the
▇▇▇▇▇▇ Cancer Center, will be the principal investigator of this
project. GENTEST will, within ninety (90) days of the execution
of this Agreement pay USFRF the sum of $311,250.00 for the
twenty-four (24) months sponsored research project to develop the
subject test kits; and of said sum of
2
percent ($54,250.00) will be used to cover overhead associated
therewith. Any additional intellectual property relating to USF
Technology that results from said research and development will
be owned by USF and included in this exclusive license granted to
GENTEST.
C. Running Royalties equal to:
(i) five percent (5%) of Revenue from Commercial Exploitation
for Licensed Product, (e.g., test kits for cancer
screening); and
(ii) shall pay to USF as minimum royalty payments as follows:
zero (0) dollars for the first twenty-four (24) months;
seventy-five thousand ($75,000.00) dollars at the end of
year three (3); one hundred thousand ($100,000.00) dollars
at the end of year four (4); one hundred twenty-five
($125,000.00) dollars at the end of year five (5); one
hundred fifty ($150,000.00) dollars at the end of year six
(6); and said sum for each successive year thereafter during
the term of this Agreement.
V. Patent Prosecution
The filing, prosecution and maintenance of all USF Patent Rights shall
be at the sole discretion of USF, provided that at Licensee's request
and sole expense, USFRF will arrange for USF to seek, obtain and
maintain such patent and other protection, in the territory, to the
extent that USF is lawfully entitled to do so.
VI. Assignability
This Agreement may be assigned to any person or entity without USFRF's
advance notice, and thereafter may be assigned to any person or entity
only with advanced written approval from USFRF; provided that USFRF
will not reasonably withhold such approval in a timely manner, and
further provided that any such assignee agrees to comply with all of
the terms and conditions hereunder.
VII. Sublicensing
GENTEST'S rights and obligations under this Agreement may be
sublicensed without USFRF's advance written permission, provided
GENTEST is in compliance with all of its obligations under this
Agreement.
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USFRF will permit GENTEST to sublicense its rights to Commercially
Exploit Licensed Products, provided that GENTEST shall pay royalties to
USFRF as if GENTEST had Commercially Exploited Licensed Products sold
by its sublicenses which may have been granted by GENTEST. All
sub-licensees shall agree to comply with all of the terms and
conditions of this Agreement. GENTEST shall provide USFRF with a copy
of each executed sublicense within fifteen (15) days of its execution.
VIII. USFRF Retained Rights and Covenants
USFRF retains for itself and for USF the right to do all things granted
to GENTEST under Section II, and USFRF covenants that USFRF will not
license others to Commercially Exploit USF Technology licensed to
GENTEST under this Agreement, and will not itself so Commercially
Exploit, unless
(i) authorized by this Agreement, or
(ii) GENTEST becomes insolvent, or
(iii) anyone files a lien against this Agreement, or
(iv) GENTEST takes any action, or fails to take any action, the
result of which gives a third party the right to acquire a
security interest in this Agreement and/or USF Patent Rights,
or
(v) GENTEST files for bankruptcy or a receiver is appointed, or
(vi) GENTEST ceases to carry on its business, with the exception of
merger, reorganization, acquisition, or similar restructuring.
(vii) GENTEST materially breaches this Agreement in a manner which
causes the Agreement to terminate or gives USFRF the right to
terminate under SectionXII.
IX. Product Liability/Insurance
GENTEST shall, at all times during the term of this Agreement and
thereafter, be solely responsible for, and defend, hold harmless and
indemnify State of Florida, Board of Regions, USF, USFRF, their
trustees, officers, employees, agents and other representatives,
against any claims and expenses, including legal expenses and
reasonable attorneys' fees, arising out of the death of or injury to
any person or property based upon products and/or services produced,
provided or developed for, or
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by GENTEST, or commercially exploited by GENTEST pursuant to its
rights under this Agreement. GENTEST shall obtain and carry in full
force and effect product liability insurance, in amounts customary in
the relevant industry in which GENTEST commercially exploits licensed
products which shall protect USF, USFRF, their trustees, the Board of
Regents, officers, employees, and agents and the State of Florida and
other representatives in regard to the foregoing events at such time
as GENTEST begins to supply licensed products to the marketplace.
X. Record Keeping
A. GENTEST 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 USFRF hereunder.
Said books of account shall be kept at GENTEST'S principal
place of business. Said books and the supporting data shall be
open at all reasonable times, with reasonable advanced notice,
for five (5) years following the end of the calendar year to
which they pertain, to the inspection of USFRF or its agents
for the purpose of verifying GENTEST'S royalty statement or
compliance in other respects with this Agreement.
B. GENTEST within ninety (90) days after each six (6) months,
shall deliver to USFRF true and accurate reports, giving such
particulars of the business conducted by GENTEST during the
six (6) months as shall be pertinent to royalty accounting
hereunder. These shall include at least the following:
(i) the number of Licensed Products provided by GENTEST to
its customers, if any,
(ii) the Revenue derived by GENTEST from its Commercial
Exploitation of Licensed Products, if any, and
(iii) the royalties due pursuant to Section IV.
With each such report submitted, GENTEST shall pay the
royalties and any other consideration due and payable under
this Agreement. If no royalties, fees or other consideration
shall be due, GENTEST shall so report.
C. On or before the ninetieth (90th) day following the close of
GENTEST'S fiscal year, GENTEST shall provide USFRF with GENTEST'S
financial statements for the preceding fiscal year including, at
a minimum, a Balance sheet and an Operating Statement.
D. The payments for royalties, fees or other consideration set forth
in this
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Agreement shall, if overdue, bear interest until payment at the
monthly rate of one percent (1%). The payment of such interest
shall not foreclose USFRF from exercising any other rights either
may have as a consequence of the lateness of any payment.
E. GENTEST hereby agrees that it shall not sell, transfer, export or
re-export any Licensed Products or related information in any
form, or any direct products of such information, except in
compliance with all applicable laws, including the export laws of
any U. S. government agency and any regulations thereunder, and
will not sell, transfer, export or re-export any such Licensed
Products or information to any persons or any entities with
regard to which there exist grounds to suspect or believe that
they are violating such laws. GENTEST shall be solely responsible
for obtaining all licenses, permits or authorizations required
from the U. S. and any other government for any such export or
re-export.
XI. Non Use of Names
GENTEST shall not use the names of the USF or USFRF, nor any adaptation
of either, in any advertising, promotional or sales literature without
prior written consent obtained from USF and/or USFRF in each case,
except that GENTEST may state that it is licensed under one or more of
the patents and/or applications comprising the USF Patent Rights.
XII. Term and Termination
A. Unless sooner terminated as provided herein, the royalty
obligations of this Agreement will expire with respect to a given
Licensed Product the longer of twenty (20) years from the date of
the execution of this Agreement or the expiration of the last to
expire patent which covers the licensed intellectual property in
the Territory. Notwithstanding the foregoing, the parties hereto
agree that the royalty provisions of Paragraph IV.C(i) are not
solely dependent upon Patent Rights, and GENTEST'S obligations to
pay royalties under paragraph IV.C.(i) hereinabove shall continue
unabated regardless of any of the foregoing expirations.
B. In the event either party files for bankruptcy or a receiver is
appointed, this Agreement may immediately thereafter be
terminated at the option of the other party.
C. Should GENTEST fail to pay the royalties, fees and/or other
consideration due
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and payable hereunder, USFRF shall have the right to terminate
this Agreement on forty-five (45) days written notice. Upon the
expiration of the forty-five (45) day period, if GENTEST shall
not have paid all such royalties and interest thereon, USFRF
shall have the right to terminate this Agreement.
D. Upon any material breach or default of this Agreement by GENTEST,
other than those occurrences set out hereinabove which shall
always take precedence in that order over any material breach or
default referred to in this Section, USFRF shall have the right
to terminate this Agreement and the rights, privileges and
license granted hereunder upon forty-five (45) days' written
notice to GENTEST. Such termination shall become effective unless
GENTEST shall have cured any such breach or default prior to the
expiration of forty-five (45) days from the date GENTEST receives
notice of the breach or default.
E. 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.
GENTEST may, however, after the effective date of such
termination, complete Commercial Exploitation of Licensed
Products for which GENTEST has received consideration at the time
of such termination and sell the same, provided that GENTEST
shall pay to USFRF the royalties or other consideration thereon
as required under the provisions of Section IV of this Agreement,
and shall submit the reports required under Section X regarding
the Commercial Exploitation of the Licensed Products.
F. Upon termination of this Agreement for any reason, all
intellectual property rights licensed hereunder, including
without limitation, all USF Patent Rights and all USF Technology
shall revert to USF and USFRF, and GENTEST shall have no further
right to or continuing interest. In addition, any sublicenses
hereunder shall terminate, unless accepted by USFRF.
G. GENTEST, its successors or assigns, shall have the option to
terminate this license agreement upon thirty (30) days written
notice and in that event, GENTEST shall cease using USF
Technology and return same to USF. In this event, it is
understood that all future monetary obligations under this
Agreement shall be void and any monies paid to date to USFRF
shall be non-refundable to GENTEST, or its assigns.
XIII. Payments Notices and Other Communications
Any payment, notice or other communication made to any party pursuant
to this
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Agreement shall be sufficiently made or given on the date of mailing
if sent to such party by certified first class mail or air courier,
postage prepaid, addressed to it at its address below, or at such
other address as it shall have designated by written notice given to
the other party.
In the case of USF: Copy to:
Director, Patents & Licensing General Counsel
▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇ FAO 126 ▇▇▇▇ ▇. ▇▇▇▇▇▇ ▇▇▇. ▇▇▇ ▇▇▇
▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
In the case of USFRF:
USF Research Foundation, Inc.
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▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
In the case of GENTEST:
GENTEST, Inc.
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▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇
XIV. Infringement
GENTEST understands that USFRF makes no representations and provides no
assurances that Commercial Exploitation of Licensed Products under this
Agreement does not, and will not in the future, infringe or otherwise
violate the rights of others.
XV. Miscellaneous Provisions
A. Each party represents and warrants that it has the authority to
enter into this Agreement and that the execution, delivery and
performance of this Agreement does not conflict with any
agreement, or understanding, either written or oral, to which it
is a party or to which it is otherwise bound.
B. This Agreement shall be construed, governed, interpreted and
applied in accordance with the laws of the State of Florida,
U.S.A.
C. The parties hereto acknowledge that this Agreement sets forth the
entire agreement and understanding of the parties, hereto as to
the subject matter
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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.
D. If any term, covenant or condition of this Agreement or the
application thereof to any party or circumstance shall, to any
extent be held to be invalid or unenforceable,
(i) the remainder of this Agreement, or the application
of such term, covenant or condition to the parties or
circumstances other than those as to which it is held
invalid or unenforceable, shall not be affected
thereby and each term, covenant or condition of this
Agreement shall be valid and be enforced to the
fullest extent permitted by law; and
(ii) the parties hereto covenant and agree to renegotiate
any such term, covenant or application thereof in
good faith in order to provide a reasonably
acceptable alternative to the term, covenant or
condition of this Agreement or the application
thereof that is invalid or unenforceable, it being
the intent of the parties that the basic purpose of
this Agreement are to be effectuated.
E. In the event any provision of this Agreement is inconsistent with
USF Rules and Policy in effect as of March 1, 1998, USF Rules and
Policy shall control.
F. GENTEST agrees to use in connection with Licensed Products used
and/or provided in the United States all applicable United States
patent numbers and/or copyright notices requested by USFRF. All
Licensed Products used and/or provided in other countries shall
be marked in such a manner as to conform with the patent,
copyright and other laws and practice of the country.
G. The failure of any 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.
H. EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, USF
AND USFRF MAKE NO REPRESENTATION AND EXTEND NO WARRANTIES OF ANY
KIND, EITHER EXPRESS OR IMPLIED, 1NCLUDING BUT NOT LIMITED TO
WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
NONINFRINGEMENT, AND VALIDITY OF USF PATENT RIGHTS.
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I. It is understood and agreed that USF is a third party beneficiary
of this Agreement.
J. This Agreement shall not be effective until such time that USFRF
has received the up front fee of One Hundred Thousand
($l00,000.00) Dollars and the sponsored research fee of Three
Hundred Eleven Thousand, Two Hundred Fifty Dollars ($311,250.00).
If the fees are not received within ninety days (90) from the
execution of this Agreement, then this Agreement shall become
null and void and the parties shall be released from its terms
and obligations.
K. This Agreement, together with any amendments hereto, shall inure
to the benefits of GENTEST, its successors and/or assigns.
IN WITNESS WHEREOF, the parties have hereunto set their hands and seals and duly
executed this Agreement the day and year set forth below.
UNIVERSITY OF SOUTH FLORIDA
RESEARCH FOUNDATION, INC.
By: /s/ ▇▇▇ ▇. ▇▇▇▇▇▇▇ /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Name Witness
Title: Exec Director
Date: 4/9/98
GENTEST, INC.
By: /s/ ▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇ /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Name ▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇ Witness
Title: CEO
Date: 4/9/98
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