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EXHIBIT 10.18A
LICENSE AGREEMENT
THIS AGREEMENT is made and entered into as of the date last entered
below ("the Effective Date"), by and between ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, Ph.D., an
individual having an address of ▇▇▇▇▇ ▇▇▇ ▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇
▇▇▇▇▇ ("▇▇. ▇▇▇▇▇▇▇▇") and SpectRx, Inc., a Delaware corporation having its
principal office at ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇ ("SRX").
WHEREAS, ▇▇. ▇▇▇▇▇▇▇▇ owns rights in and to technology relating to
fluorescence spectroscopy, including the Licensed Technology further described
and defined below;
AND WHEREAS, SRX desires to obtain the exclusive right to utilize the
Licensed Technology;
NOW, THEREFORE, for and in consideration of the foregoing and the
mutual covenants and agreements contained herein, the parties hereto agree as
follows:
1. Definitions
As used herein:
1.1 "Licensed Patents" means:
(a) United States Patent Application Serial No.
08/183,238, filed April 12, 1993, entitled "Fluorescent Energy Transfer
Immunoassay";
(b) Canadian Patent Application No. 2087413, filed
January 15, 1993, entitled "Fluorescent Energy Transfer Immunoassay";
(c) European Patent Application No. 93400091.0, filed
January 15, 1993, entitled "Fluorescent Energy Transfer Immunoassay";
(d) Japanese Patent Application No. 006057/1993, filed
January 15, 1993, entitled "Fluorescent Energy Transfer Immunoassay";
(e) United States Patent Application Serial No.
08/403,554, filed March 14, 1995, entitled "pH and pCO2 Sensing by Luminescent
Lifetimes and Energy Transfer";
(f) Canadian Patent Application No. 2087412, filed
January 15, 1993, entitled "pH and pCO2 Sensing by Luminescent Lifetimes and
Energy Transfer";
(g) European Patent Application No. 93400089.4, filed
January 15, 1993, entitled "pH and pCO2 Sensing by Luminescent Lifetimes and
Energy Transfer";
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(h) Japanese Patent Application No. 006047/1993, filed
January 18, 1993, entitled "pH and pCO2 Sensing by Luminescent Lifetimes and
Energy Transfer";
(i) United States Patent Application Serial No.
08/173,277, filed December 27, 1993, entitled "Chemical Sensing by
Phase-Modulation Fluorometry";
(j) European Patent Application No. 92911548.3, filed May
4, 1992, entitled "Chemical Sensing by Phase-Modulation Fluorometry";
(k) United States Patent Application Serial No.
08/102,806, filed August 6, 1993, entitled "Method for Optically Measuring
Chemical Analytes";
(l) United States Patent No. 5,409,835, issued April 25,
1995, entitled "Long-Wavelength Fluorescent Probe Compounds for Calcium Ions
and their Use in Ratiometrically Measuring Calcium Ion Concentrations";
(m) United States Patent Application Serial No.
08/094,016, filed July 23, 1993, entitled "Apparatus for Multi-Dimensional
Phase Fluorescence Lifetime Imaging";
(n) European Patent Application No. 92903893.3, filed
January 23, 1992, entitled "Method and Apparatus for Multi-Dimensional Phase
Fluorescence Lifetime Imaging";
(o) U.S. Patent No. 5,246,867, issued September 21, 1993,
entitled "Determination and Quantification of Saccharides by Luminescence
Lifetimes and Energy Transfer";
(p) Canadian Patent Application No. 2087411, filed
January 15, 1993, entitled "Determination and Quantification of Saccharides by
Luminescence Lifetimes and Energy Transfer";
(q) European Patent Application No. 93400090.2, filed
January 15, 1993, entitled "Determination and Quantification of Saccharides by
Luminescence Lifetimes and Energy Transfer";
(r) Japanese Patent Application No. 006052/1993, filed
January 18, 1993, entitled "Determination and Quantification of Saccharides by
Luminescence Lifetimes and Energy Transfer";
(s) United States Patent No. 5,196,709, issued March 23,
1993, entitled "Fluorometry Method and Apparatus Using a Semiconductor Laser
Diode as a Light Source";
(t) United States Patent No. 5,281,828, issued January
25, 1994, entitled "Phase Fluorometry using a Modulated Electroluminescent Lamp
as a Light Source";
(u) United States Patent Application Serial No.
08/150,122, filed April 12, 1993, entitled "Method and Apparatus for Performing
Phase Fluorescence Lifetime Measuring in Flow Cytometry";
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(v) European Patent Application No. 91918387.1, filed
October 10, 1991, entitled "Method and Apparatus for Performing Phase
Fluorescence Lifetime Measuring in Flow Cytometry";
(w) United States Patent Application Serial No.
08/330,743, filed October 28, 1994, entitled "Long Lifetime Anisotropy
(Polarization) Probes for Clinical Chemistry, Immunoassays, Affinity Assays and
Biomedical Research";
(x) International Application No. PCT/US95/ __________,
filed October 27, 1995, entitled "Long Lifetime Anisotropy (Polarization)
Probes for Clinical Chemistry, Immunoassays, Affinity Assays and Biomedical
Research";
(y) all patents which issue from such applications and
all divisionals, continuations, reissues, extensions, and foreign counterparts
of these applications and patents, and all utility models, design registrations
or similar rights corresponding thereto.
1.2 "Licensed Technology" means the Licensed Patents and all
designs, technical information, know-how, knowledge, data, specifications, test
results and other information (including designs, technical information,
know-how, knowledge, data, specifications, test results and other information
previously disclosed to SRX) relating to medical applications under the
Licensed Patents.
1.3 "Licensed Territory" means the entire world.
1.4 "Licensed Method" means any method which is claimed in a
pending patent application or covered by an issued, unexpired claim of a patent
contained in the Licensed Patents.
1.5 "Licensed Product(s)" means any product which is claimed in a
pending patent application or covered by an issued, unexpired claim of a patent
contained in the Licensed Patents.
1.6 "Affiliate" means an entity of which SRX has at least twenty
(20) percent ownership, or an entity having at least twenty (20) percent
ownership of SRX.
1.7 "Net Selling Price" of a Licensed Product means the gross
selling price to an unrelated purchaser of such Licensed Product from SRX or an
Affiliate or sublicensee less only:
(a) customary trade discounts or allowances actually
allowed and taken;
(b) any freight or other transportation costs, insurance
charges, duties and tariffs separately invoiced to
and paid or reimbursed by such unrelated purchaser;
(c) returns which are accepted by SRX or such Affiliate
or sublicensee from such unrelated purchaser; and
(d) sales or excise taxes which SRX or such Affiliate or
sublicensee is obligated to pay.
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1.8 "Net Sales" of Licensed Products means the sum of the Net
Selling Price of each Licensed Product sold by SRX or an Affiliate or
sublicensee to an unrelated purchaser.
1.9 "Agreement" means this Agreement including all Exhibits
attached to this Agreement together with any written amendments of any of the
foregoing.
2. Grant of License
2.1 License. Subject to the exceptions of paragraph 11.2, ▇▇.
▇▇▇▇▇▇▇▇ hereby grants to SRX the exclusive right and license to use and
exploit the Licensed Technology to make, have made, use, market, lease and sell
Licensed Products and to practice Licensed Methods in the Licensed Territory
during the term of this Agreement unless sooner terminated as provided in this
Agreement. The license granted herein with respect to the Licensed Patents
listed in paragraph 11.2 is subject to the prior agreement between the
University of Maryland and Becton, ▇▇▇▇▇▇▇▇▇ and Company, referred to in
paragraph 11.2.
2.2 Sublicenses. SRX shall be allowed to grant sublicenses under
this Agreement.
2.3 Development Information. Upon execution of this agreement,
▇▇. ▇▇▇▇▇▇▇▇ shall provide SRX or its nominees with the Licensed Technology and
all information relating to the development of the Licensed Technology,
including but not limited to blueprints, working drawings, and data and
information relating to manufacture of Licensed Products.
3. Royalties, Payments and Reimbursement
3.1 Lump Sum Payments. In partial consideration of the right and
license granted in the Agreement and regardless of any obligation to pay
royalties, SRX shall pay to ▇▇. ▇▇▇▇▇▇▇▇ the sum of fifteen thousand dollars
(US$15,000.00) within seven (7) days after the Effective Date of this
Agreement. Subject to the provisions of paragraph 10.4(b), SRX shall also pay
to ▇▇. ▇▇▇▇▇▇▇▇ a maintenance fee of ten thousand dollars (US$10,000.00) within
seven (7) days after each anniversary of the Effective Date in which this
Agreement is in force.
3.2 Timing of Royalty Payments. Royalties shall be paid
quarterly, within thirty (30) days after each calendar quarter ending March 31,
June 30, September 30, and December 31 of each year in which this Agreement is
in force.
3.3 Calculation of Royalty Payments. For a particular calendar
quarter, the royalty payment due pursuant to paragraph 3.2 shall be the sum of
(a) three (3) percent of the Net Sales of Licensed Products manufactured by or
for SRX or an Affiliate and sold by SRX and its Affiliates and any sublicensees
during such quarter in each country in the Licensed Territory in which a patent
of the Licensed Patents exists or a patent application of the Licensed Patents
is pending, and (b) one and one-half (1 1/2) percent of the Net Sales of
Licensed Products manufactured by or for SRX or an Affiliate and sold by SRX
and its Affiliates and any sublicensees during such quarter in each country
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in the Licensed Territory in which no patent of the Licensed Patents exists or
no application of the Licensed Patents is pending.
3.4 Minimum Royalty Payments. Commencing at the end of the
calendar quarter following the fourth anniversary of the Effective Date of this
Agreement ("Year 5") and subject to the provisions of paragraph 10.4(b), SRX
shall be obligated to make minimum royalty payments to ▇▇. ▇▇▇▇▇▇▇▇ as provided
in paragraph 3.5.
3.5 Calculation of Minimum Royalty Payment. In the event the sum
of the royalties due pursuant to paragraphs 3.3 and 3.7 for the calendar year
commencing Year 5 and each subsequent year does not exceed one hundred thousand
dollars (US$100,000.00), SRX shall also pay ▇▇. ▇▇▇▇▇▇▇▇, at the appropriate
time under paragraph 3.2, the difference between the royalties due for such
years pursuant to paragraphs 3.3 and 3.7 and one hundred thousand dollars
(US$100,000.00). The effect of this provision is to provide ▇▇. ▇▇▇▇▇▇▇▇ a
minimum royalty payment of one hundred thousand dollars (US$100,000.00) for
each year commencing Year 5, payable in arrears.
3.6 No Multiple Royalties. No multiple royalties shall be payable
because any Licensed Product is covered by more than one patent within the
Licensed Patents.
3.7 Royalties Paid by Sublicensees for Licensed Technology. If
SRX sublicenses Licensed Technology pursuant to paragraph 2.2, for sales under
such sublicense of Licensed Products which are not manufactured by or for SRX
or an Affiliate, SRX shall pay to ▇▇. ▇▇▇▇▇▇▇▇, at the appropriate time under
paragraph 3.2, fifty (50) percent of the royalties actually received by SRX
from the sublicensee rather than any royalties calculated under paragraph 3.3.
4. Improvements In Licensed Technology
4.1 Notification of Improvements. ▇▇. ▇▇▇▇▇▇▇▇ shall promptly
inform SRX of any improvements to the Licensed Technology developed or acquired
by ▇▇. ▇▇▇▇▇▇▇▇ during the term of this Agreement, except where such
improvements are subject to ▇▇. ▇▇▇▇▇▇▇▇' employment agreement with the
University of Maryland. Improvements in the Licensed Technology developed
during the term of this Agreement which are owned or controlled by ▇▇. ▇▇▇▇▇▇▇▇
and not subject to ▇▇. ▇▇▇▇▇▇▇▇' employment agreement with the University of
Maryland automatically become part of the Licensed Technology. ▇▇. ▇▇▇▇▇▇▇▇
will not communicate confidential University of Maryland-owned information to
SRX without a suitable Confidentiality Agreement between the University of
Maryland and SRX as set forth in paragraph 9.2. SRX recognizes that other work
is performed in ▇▇. ▇▇▇▇▇▇▇▇' laboratory that is fluorescence-based but which
is not Licensed Technology and which is not related to this Agreement.
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5. Records
5.1 Records of Sales. SRX shall at all times during the term of
this Agreement keep at its principal place of business true and accurate
records of all sales subject to Section 3 of this Agreement in such form and
manner that royalties owed hereunder to ▇▇. ▇▇▇▇▇▇▇▇ may be readily and
accurately determined.
5.2 Inspection. Once annually, an independent certified public
accountant acceptable to SRX shall have the right, at ▇▇. ▇▇▇▇▇▇▇▇' expense,
during normal business hours and after providing at least five business days'
notice, during the period of this Agreement, to examine those records of SRX
which may reasonably be needed for the purpose of verifying the amounts owed to
▇▇. ▇▇▇▇▇▇▇▇ hereunder and the accuracy of the reports furnished by SRX under
Section 6 of this Agreement. Such certified public accountant shall maintain
the confidentiality of all confidential information obtained by it from
examination of SRX's records and shall use such information only for the
purposes of this Agreement.
6. Reports
6.1 Quarterly Reports. When making each royalty payment pursuant
to Section 3, SRX shall prepare and deliver to ▇▇. ▇▇▇▇▇▇▇▇ a true and accurate
report, giving such particulars of the business conducted by SRX and its
sublicensees during the preceding calendar quarter as is required to calculate
the royalties due ▇▇. ▇▇▇▇▇▇▇▇ hereunder. If no payment is due for a
particular calendar quarter, SRX shall so report.
7. Patent Maintenance
7.1 Responsibility. SRX shall be responsible for the payment of
all fees, costs, and expenses paid or incurred connected with the payment of
any maintenance fee or annuities to maintain the Licensed Patents licensed to
SRX under this Agreement and for filing and prosecuting all patent applications
relating to Licensed Technology licensed to SRX during the term of this
Agreement. SRX shall involve ▇▇. ▇▇▇▇▇▇▇▇' regular patent attorney in such
prosecution for two (2) years following the Effective Date; provided, however,
that during such two-year period such regular patent attorney shall, in SRX's
opinion, provide satisfactory and cost-effective performance. ▇▇. ▇▇▇▇▇▇▇▇
shall cooperate (and cause his employees and agents to cooperate) as reasonably
requested by SRX in any such filings and prosecutions, such cooperation to
include executing or supplying without additional compensation all papers
(including those evidencing the grant of the license to SRX under this
Agreement) and other instruments, information, or testimony deemed appropriate
by SRX for such filings and prosecutions. If SRX, in its sole discretion,
elects not to file a patent application or not to continue prosecuting a patent
application relating to Licensed Technology in a particular country, ▇▇.
▇▇▇▇▇▇▇▇ shall have the right, at his sole expense, to file or continue
prosecuting and to maintain such application and, as to such application and
any patent issuing thereon, SRX's rights and license shall be non-exclusive
rather than exclusive.
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7.2 Notification. SRX shall, within fourteen (14) days of the
event, advise ▇▇. ▇▇▇▇▇▇▇▇ of the filing of any patent application under
paragraph 7.1 and, as appropriate, advise ▇▇. ▇▇▇▇▇▇▇▇ of the prosecution of
such application and maintenance of any patent issuing thereon.
7.3 Inventions Made by SRX. Inventions made by SRX relating to
the subject matter of the Licensed Technology, and any patents based thereon,
shall belong to SRX.
8. Patent Infringement
8.1 Notice of Infringement. SRX and ▇▇. ▇▇▇▇▇▇▇▇ shall take all
reasonable steps to protect the Licensed Patents in all parts of the Licensed
Territory, and each of ▇▇. ▇▇▇▇▇▇▇▇ and SRX shall give prompt notice to the
other of any infringement or threatened or suspected infringement thereof that
shall at any time come to his or its knowledge together with such detailed
information as shall from time to time be available to such party relating to
such infringement or threatened or suspected infringement.
8.2 Defense. In the event that a declaratory judgment action,
cancellation, opposition or similar proceeding alleging invalidity,
unenforceability or noninfringement of any of the Licensed Patents shall be
brought by a third party against ▇▇. ▇▇▇▇▇▇▇▇, SRX shall have the right to
defend or settle such action or proceeding; provided, however, that if SRX
determines at any time that it does not desire to defend (or continue to
defend) such action, SRX shall promptly so advise ▇▇. ▇▇▇▇▇▇▇▇, and ▇▇.
▇▇▇▇▇▇▇▇ shall then have the right to defend (or continue to defend) such
action at ▇▇. ▇▇▇▇▇▇▇▇' expense.
8.3 Infringement Suits. SRX shall be responsible for instituting
legal action against infringers of the Licensed Patents, if it is of the
opinion that such infringement will seriously affect its business. The
decision to institute or settle legal action will be solely that of SRX. If
▇▇. ▇▇▇▇▇▇▇▇ disagrees with SRX's decision not to institute legal action
against infringers, ▇▇. ▇▇▇▇▇▇▇▇ shall have the option to institute legal
action for patent infringement at his own expense and the right to retain all
damages (including attorneys' fees) obtained as a result of such legal action.
If SRX chooses to institute legal action against infringers, it shall be
entitled to deduct its costs relating to each such legal action from any
damages (including attorneys' fees) obtained as a result of the action. Should
any monies then remain of the damages, SRX shall retain seventy-five (75)
percent of such remaining monies and shall pay to ▇▇. ▇▇▇▇▇▇▇▇ the other
twenty-five (25) percent of such remaining monies.
8.4 Cooperation. In any suit either party may commence or defend
against a third party pursuant to its rights under this Agreement in order to
enforce or defend the validity or enforceability of the Licensed Patents, the
other party shall, at the request and expense of the party initiating or
defending such suit, cooperate in all respects and, to the extent possible,
have its or his employees testify when requested and make available relevant
records, papers, information, samples, specimens and the like.
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9. Confidentiality
9.1 Agreement Terms.
(a) During the term of this Agreement and for five (5)
years thereafter, SRX shall not divulge to any third party (excluding its
employees, Affiliates, and sublicensees) any written information provided by
▇▇. ▇▇▇▇▇▇▇▇ pursuant to paragraph 2.3 and prominently marked "CONFIDENTIAL"
when so provided; provided, however, that SRX shall not be obligated to
maintain as confidential any information now or hereafter in the public domain
through no fault of SRX, any information in SRX's possession prior to May 1,
1995, or any information ordered to be divulged by a court of competent
jurisdiction.
(b) During the term of this Agreement and for five (5)
years thereafter, ▇▇. ▇▇▇▇▇▇▇▇ shall not divulge to any third party any written
information provided by SRX and prominently marked "CONFIDENTIAL" when so
provided; provided, however, that ▇▇. ▇▇▇▇▇▇▇▇ shall not be obligated to
maintain as confidential any information now or hereafter in the public domain
through no fault of ▇▇. ▇▇▇▇▇▇▇▇, any information in ▇▇. ▇▇▇▇▇▇▇▇' possession
prior to May 1, 1995, or any information ordered to be divulged by a court of
competent jurisdiction.
9.2 University of Maryland. Nothing in this Agreement shall
require ▇▇. ▇▇▇▇▇▇▇▇ to divulge to SRX information provided to him in
confidence by the University of Maryland and considered confidential and
proprietary to the University of Maryland unless a suitable confidentiality
agreement exists between SRX and the University of Maryland.
10. Term and Termination
10.1 Duration. The term of this Agreement shall commence upon the
Effective Date and, unless sooner terminated as otherwise provided in this
Agreement, shall continue for fifteen (15) years or until all patents for
Licensed Technology licensed to SRX under this Agreement have expired,
whichever is later.
10.2 Termination of Exclusivity or Agreement.
(a) If SRX defaults in any payment or in rendering any
report to ▇▇. ▇▇▇▇▇▇▇▇ required by this Agreement and remains in default for
thirty (30) days after receiving written notice from ▇▇. ▇▇▇▇▇▇▇▇ pursuant to
paragraph 12.5, ▇▇. ▇▇▇▇▇▇▇▇ may convert the exclusive license granted in
paragraph 2.1 to a non-exclusive license and reduce by twenty-five (25) percent
all annual minimum royalties to be paid pursuant to paragraphs 3.4 and 3.5 and
all annual maintenance fees to be paid pursuant to paragraph 3.1, without
prejudice to monies previously due to ▇▇. ▇▇▇▇▇▇▇▇.
(b) If SRX defaults in performing any other material
obligation under this Agreement and remains in default for sixty (60) days
after receiving written notice from
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▇▇. ▇▇▇▇▇▇▇▇ pursuant to paragraph 12.5, or if SRX is adjudicated bankrupt or
insolvent, or if SRX enters into a composition with its creditors, or if a
receiver is appointed for any portion of SRX's assets, then ▇▇. ▇▇▇▇▇▇▇▇ may
terminate this Agreement upon giving written notice to SRX at least thirty (30)
days prior to the effective date of the termination.
(c) If during the year following the Effective Date SRX
fails to make reasonable effort to commercialize or sublicense the Licensed
Technology or Licensed Products, then ▇▇. ▇▇▇▇▇▇▇▇ may, upon thirty (30) days'
written notice to SRX, terminate this Agreement, without prejudice to monies
previously due to ▇▇. ▇▇▇▇▇▇▇▇. For purposes of this provision, SRX's
expenditure of two hundred fifty thousand dollars (US$250,000.00) in attempting
to commercialize or sublicense the Licensed Technology or Licensed Products
during this period is per se reasonable effort.
10.3 Termination by SRX. SRX may terminate this Agreement at any
time by giving ▇▇. ▇▇▇▇▇▇▇▇ thirty (30) days' prior written notice of SRX's
election to terminate. Alternatively, upon thirty (30) days' prior written
notice, SRX may convert the exclusive license granted in paragraph 2.1 to a
non-exclusive license and reduce by twenty-five (25) percent all annual minimum
royalties to be paid pursuant to paragraphs 3.4 and 3.5 and all annual
maintenance fees to be paid pursuant to paragraph 3.1, without prejudice to
monies previously due to ▇▇. ▇▇▇▇▇▇▇▇.
10.4 Events Following Termination. If this Agreement is terminated
by ▇▇. ▇▇▇▇▇▇▇▇ under paragraph 10.2 or by SRX under paragraph 10.3, then:
(a) All rights and obligations in relation to the
Licensed Technology and improvements thereto made solely by and/or assigned
solely to ▇▇. ▇▇▇▇▇▇▇▇ shall revert to ▇▇. ▇▇▇▇▇▇▇▇ and may be exploited by ▇▇.
▇▇▇▇▇▇▇▇ as his unencumbered beneficially owned property.
(b) The provisions of Section 3 concerning the payment of
royalties shall continue to bind the parties until all royalties payable under
this Agreement are paid; provided, however, that no maintenance fee under
paragraph 3.1 and no minimum royalty under paragraph 3.4 shall be due to ▇▇.
▇▇▇▇▇▇▇▇ for any year commencing on or after the anniversary of the Effective
Date of this Agreement most immediately following the date of termination.
(c) The termination of this Agreement shall not affect
any right of action which may have accrued to either party in respect of any
breach prior to the date of such termination.
11. Warranties
11.1 ▇▇. ▇▇▇▇▇▇▇▇' Warranties. ▇▇. ▇▇▇▇▇▇▇▇ hereby makes the
following representations and warranties to SRX, which representations and
warranties are true and correct on the date hereof:
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(a) Except as expressly set forth to the contrary in
paragraph 11.2 of this Agreement, ▇▇. ▇▇▇▇▇▇▇▇ is the sole owner of the
Licensed Patents and Licensed Technology;
(b) ▇▇. ▇▇▇▇▇▇▇▇ has the right to grant the rights and
license granted in this Agreement and has executed no agreement in conflict
herewith;
(c) Excepting the Licensed Patents, and subject matter
which is subject to ▇▇. ▇▇▇▇▇▇▇▇' employment agreement with the University of
Maryland, ▇▇. ▇▇▇▇▇▇▇▇ has not filed, caused to be filed, or participated in
filing any applications for patent, nor has he obtained in his name, or caused
to be obtained in the name of another, any patent based on or covering the
Licensed Technology;
(d) ▇▇. ▇▇▇▇▇▇▇▇ is unaware of any knowledge of
invalidity of or allegation of invalidity of any claim of any patent in the
Licensed Patents; and
(e) There are no claims (relating to patent infringement
or any other matters), actions, suits, agreements, proceedings, arbitrations or
investigations existing or pending or, to the best of ▇▇. ▇▇▇▇▇▇▇▇' knowledge,
threatened, against ▇▇. ▇▇▇▇▇▇▇▇ or others which if adversely determined would
adversely affect the Licensed Technology (or the patentability thereof) or ▇▇.
▇▇▇▇▇▇▇▇, ability to enter into or carry out this Agreement or license Licensed
Technology.
11.2 Licensed Patents Subject to Other Agreement. The following
Licensed Patents are subject to a prior agreement between University of
Maryland and Becton, ▇▇▇▇▇▇▇▇▇ and Company dated February 16, 1989:
(a) United States Patent Application Serial No.
08/183,238, filed April 12, 1993, entitled "Fluorescent Energy Transfer
Immunoassay";
(b) Canadian Patent Application No. 2087413, filed
January 15, 1993, entitled "Fluorescent Energy Transfer Immunoassay";
(c) European Patent Application No. 93400091.0, filed
January 15, 1993, entitled "Fluorescent Energy Transfer Immunoassay";
(d) Japanese Patent Application No. 006057/1993, filed
January 15, 1993, entitled "Fluorescent Energy Transfer Immunoassay";
(e) U.S. Patent No. 5,246,867, issued September 21, 1993,
entitled "Determination and Quantification of Saccharides by Luminescence
Lifetimes and Energy Transfer";
(f) Canadian Patent Application No. 2087411, filed
January 15, 1993, entitled "Determination and Quantification of Saccharides by
Luminescence Lifetimes and Energy Transfer";
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(g) European Patent Application No. 93400090.2, filed
January 15, 1993, entitled "Determination and Quantification of Saccharides by
Luminescence Lifetimes and Energy Transfer";
(h) Japanese Patent Application No. 006052/1993, filed
January 18, 1993, entitled "Determination and Quantification of Saccharides by
Luminescence Lifetimes and Energy Transfer";
(i) United States Patent Application Serial No.
08/150,122, filed April 12, 1993, entitled "Method and Apparatus for Performing
Phase Fluorescence Lifetime Measuring in Flow Cytometry"; and
(j) European Patent Application No. 91918387.1, filed
October 10, 1991, entitled "Method and Apparatus for Performing Phase
Fluorescence Lifetime Measuring in Flow Cytometry".
11.3 University of Maryland Inventions. Inventions which are
subject to ▇▇. ▇▇▇▇▇▇▇▇' employment agreement with the University of Maryland
are not the property of ▇▇. ▇▇▇▇▇▇▇▇ and are not included in Licensed
Technology.
12. Miscellaneous and General
12.1 Independent Contractor. SRX shall not be the agent of ▇▇.
▇▇▇▇▇▇▇▇ and shall have no authority to act for or on behalf of ▇▇. ▇▇▇▇▇▇▇▇ in
any matter. Persons retained by SRX as employees or agents shall not by reason
thereof be deemed to be employees or agents of ▇▇. ▇▇▇▇▇▇▇▇. ▇▇. ▇▇▇▇▇▇▇▇
shall not be the agent of SRX and shall have no authority to act for or on
behalf of SRX in any matter. Persons retained by ▇▇. ▇▇▇▇▇▇▇▇ as employees or
agents shall not by reason thereof be deemed to be employees or agents of SRX.
12.2 Patent Marking. SRX agrees to ▇▇▇▇ 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 to the extent
practical marked in such a manner as to conform with the patent laws and
practice of the country of sale.
12.3 Interpretation. The parties are equally responsible for the
preparation of this Agreement, and in any judicial proceeding the terms hereof
shall not be more strictly construed against one party than the other.
12.4 Resolution of Disputes. In the event the parties have a
dispute or claim of any kind arising under this Agreement that they are unable
to resolve through direct communications, such dispute shall be resolved
through arbitration pursuant to the rules of the American Arbitration
Association; provided, however, that (1) the Federal Rules of Evidence shall
apply during any such arbitration, (2) any discovery permitted during such
arbitration shall be completed within ninety (90) days of commencement of such
arbitration, (3) such arbitration shall be held in Washington, D.C. if SRX
asserts a claim against ▇▇. ▇▇▇▇▇▇▇▇, and (4) such arbitration shall be held in
Atlanta, Georgia if ▇▇. ▇▇▇▇▇▇▇▇ asserts a claim against SRX.
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12.5 Notices. All notices, statements and reports required or
contemplated herein by one party to the other shall be in writing and shall be
deemed to have been given upon delivery in person or upon the expiration of
seven (7) days after deposit in a lawful mail depository, registered or
certified mail postage prepaid, and addressed as follows:
If to SRX:
▇▇. ▇▇▇▇ ▇. ▇▇▇▇▇▇▇
SpectRx, Inc.
▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
With a copy to:
▇▇▇▇ ▇. ▇▇▇▇▇▇▇, Esq.
▇▇▇▇▇▇▇▇▇▇ & Cody
Suite 2800
▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
If to ▇▇. ▇▇▇▇▇▇▇▇:
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, Ph.D.
▇▇▇▇▇ ▇▇▇ ▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
With a copy to:
▇▇▇▇▇ ▇▇▇▇▇▇▇▇, Esq.
Rothwell, Figg, Ernst, Kurz, P.C.
▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇.▇.
▇▇▇▇▇▇▇▇▇▇, ▇.▇. ▇▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
Either party hereto may change the address to which notices to such party are
to be sent by giving notice to the other party at the address and in the manner
provided above. Any notice herein required or permitted to be given may be
given, in addition to the manner set forth above, by telex, facsimile or cable,
provided that the party giving such notice obtains acknowledgment by telex,
facsimile or cable that such notice has been received by the party to be
notified. Notice made in this manner shall be deemed to have been given when
such acknowledgement has been transmitted.
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12.6 Assignments and Inurement. Except to the extent otherwise
herein provided, neither party shall grant, transfer, convey, sublicense or
otherwise assign any of its rights or delegate any of its obligations under
this Agreement without the prior written consent of the other, which consent
shall not be unreasonably withheld, except in connection with the
reorganization or sale of substantially all of the assets of the party's
business or as otherwise explicitly permitted in this Agreement, and any
attempt to do so shall be of no effect. This Agreement shall be binding upon
and inure to the benefit of the successors and permitted assigns of the parties
hereto.
12.7 Entire Agreement. This Agreement constitutes the entire
agreement among ▇▇. ▇▇▇▇▇▇▇▇ and SRX with respect to the subject matter hereof
and shall not be modified, amended or terminated except as herein provided or
except by another agreement in writing executed by the parties hereto.
12.8 Headings. The section and paragraph headings are for
convenience only and are not a part of this Agreement.
12.9 Severability. All rights and restrictions contained herein
may be exercised and shall be applicable and binding only to the extent that
they do not violate any applicable laws and are intended to be limited to the
extent necessary so that they will not render this Agreement illegal, invalid
or unenforceable. If any provision or portion of any provision of this
Agreement not essential to the commercial purpose of this Agreement shall be
held to be illegal, invalid or unenforceable by a court of competent
jurisdiction, it is the intention of the parties that the remaining provisions
or portions thereof shall constitute their agreement with respect to the
subject matter hereof, and all such remaining provisions or portions thereof
shall remain in full force and effect. To the extent legally permissible, any
illegal, invalid or unenforceable provision of this Agreement shall be replaced
by a valid provision which will implement the commercial purpose of the
illegal, invalid or unenforceable provision. In the event that any provision
essential to the commercial purpose of this Agreement is held to be illegal,
invalid or unenforceable and cannot be replaced by a valid provision which will
implement the commercial purpose of this Agreement, this Agreement and the
rights granted herein shall terminate.
12.10 Choice of Law. This Agreement is acknowledged to have been
made in and shall be construed in accordance with the laws of the State of
Georgia, United States of America; provided that all questions concerning the
construction or effect of Licensed Patents shall be decided in accordance with
the laws of the country in which the particular patent application concerned
has been filed or granted, as the case may be.
12.11 Indemnification. SRX shall indemnify, hold harmless and
defend (including paying reasonable attorneys' fees) ▇▇. ▇▇▇▇▇▇▇▇ from and
against any and all losses, including but not limited to injury to persons,
property, and the environment, caused by the Licensed Products or arising out
of the manufacture, use, sale, promotion or possession of the Licensed Products
or any intermediate activity thereof or by the performance of any activities by
SRX as a result of this Agreement.
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12.12 Use of Names. SRX shall not use ▇▇. ▇▇▇▇▇▇▇▇' name, or the
name of any entity affiliated with ▇▇. ▇▇▇▇▇▇▇▇, in any advertisement or sales
material unless it obtains the prior written consent of such person or entity
proposed to be named.
12.13 Research Agreement. SRX agrees to fund a research program
under the direction of ▇▇. ▇▇▇▇▇▇▇▇ at the University of Maryland, any future
employer of ▇▇. ▇▇▇▇▇▇▇▇, or any other organization designated by ▇▇. ▇▇▇▇▇▇▇▇,
at a level not less than two hundred fifty thousand dollars (US$250,000.00) per
year, which funding is in addition to the expenditures referred to in paragraph
10.2(c).
12.14 Consulting Services. ▇▇. ▇▇▇▇▇▇▇▇ shall render to SRX such
services in a consulting capacity at his regular consulting rates as may be
requested by SRX to instruct SRX, or its nominees, in all areas pertaining to
exploitation of the Licensed Technology; provided, however, that ▇▇. ▇▇▇▇▇▇▇▇
shall not be required to expend more than two (2) days per month consulting in
such capacity except by mutual agreement of the parties.
IN WITNESS WHEREOF, ▇▇. ▇▇▇▇▇▇▇▇ has executed this Agreement and SRX
has caused this Agreement to be executed by its duly authorized representative
as of the day and year first above written.
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, Ph.D.
Date: November 22, 1995 By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, Ph.D.
----------------------------- ------------------------------------
SPECTRX, INC.
Date: November 22, 1995 By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇
----------------------------- ------------------------------------
Name: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇
----------------------------------
Title: President and Chief
Executive Officer
---------------------------------
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