Exhibit 10.19(b)
AMENDMENT ONE
TO
LIMITED EXCLUSIVE
PATENT, COPYRIGHT AND
TRADEMARK LICENSE AGREEMENT
FOR
PEREGRINE(TM) DOSE CALCULATION SYSTEM
FOR RADIATION TREATMENT PLANNING
BETWEEN
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
AND
NOMOS CORPORATION
LLNL Case No. TL-1613-99
▇▇▇▇▇▇▇▇ Livermore National Laboratory
University of California
▇.▇. ▇▇▇ ▇▇▇, ▇-▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Industrial Partnerships and Commercialization
June 2000
AMENDMENT ONE
TO
LICENSE AGREEMENT NO. TL-1613-99
BETWEEN
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
AND
NOMOS CORPORATION
FOR
PEREGRINE(TM) DOSE CALCULATION SYSTEM
FOR RADIATION TREATMENT PLANNING
INTRODUCTION
This Amendment One to License Agreement No. TL-1613-99, for the "PEREGRINE(TM)
Dose Calculation System For Radiation Treatment Planning," (the "License") is
entered into by and between The Regents of the University of California ("THE
REGENTS") and NOMOS Corporation ("LICENSEE"). This Amendment One, and the
associated License Agreement, are subject to overriding obligations to the
Federal Government pursuant to the provisions of THE REGENTS' Contract No.
W-7405-ENG-48 with the United States Department of Energy ("DOE") for the
operation of the ▇▇▇▇▇▇▇▇ Livermore National Laboratory ("LLNL").
PURPOSE
The purpose of this Amendment One is to reflect a change in the scope of the
original License Agreement to include the licensing of certain trademarks owned
by THE REGENTS, as provided for in Attachment 1 (entitled "Limited Exclusive
Patent, Copyright and Trademark License Agreement") to this Amendment One which
is incorporated in its entirety by this reference.
AGREEMENT
NOW, THEREFORE, THE REGENTS and LICENSEE mutually agree to replace the original
License Agreement having an effective date of July 20, 1999, with Amendment One
to the License Agreement having an effective date of July 20, 1999.
THE REGENTS and LICENSEE hereby execute this Amendment One, in duplicate
originals, by their respective duly authorized officers.
NOMOS CORPORATION THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
▇▇▇▇▇▇▇▇ LIVERMORE NATIONAL LABORATORY
By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
------------------------------- -------------------------------------
▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Name: Executive Vice President and Name: ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
------------------------------- -----------------------------------
Chief Financial Officer
Title: Nomos Corporation Title: Director, IPAC
------------------------------ ----------------------------------
Date Signed: June 23, 2000 Date Signed: 7/11/2000
------------------------ ----------------------------
ATTACHMENT 1
LIMITED EXCLUSIVE
PATENT, COPYRIGHT AND
TRADEMARK LICENSE AGREEMENT
FOR
PEREGRINE(TM) DOSE CALCULATION SYSTEM
FOR RADIATION TREATMENT PLANNING
BETWEEN
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
AND
NOMOS CORPORATION
LLNL Case No. TL-1613-99
▇▇▇▇▇▇▇▇ Livermore National Laboratory
University of California
▇.▇. ▇▇▇ ▇▇▇, ▇-▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Industrial Partnerships and Commercialization
June 2000
ATTACHMENT 1
TABLE OF CONTENTS
Page
----
INTRODUCTION..............................................................i
PURPOSE...................................................................i
AGREEMENT................................................................ii
1. BACKGROUND..........................................................1
2. DEFINITIONS.........................................................3
3. LICENSE GRANT.......................................................8
4. SUBLICENSING RIGHTS AND OBLIGATIONS.................................9
5. FEES, ROYALTIES AND PAYMENTS........................................9
6. PERFORMANCE OBLIGATIONS............................................10
7. PROGRESS AND ROYALTY REPORTS.......................................12
8. BOOKS AND RECORDS..................................................16
9. TERM...............................................................17
10. TERMINATION AND DISPOSITION OF LICENSED PRODUCTS...................18
11. PATENT PROSECUTION AND MAINTENANCE.................................19
12. PATENT, COPYRIGHT, AND TRADEMARK INFRINGEMENT......................20
13. USE OF NAMES AND TRADEMARKS........................................22
14. LIMITED WARRANTY...................................................23
15. INDEMNIFICATION....................................................24
16. INSURANCE..........................................................24
17. WAIVER.............................................................26
18. ASSIGNABILITY......................................................27
19. LATE PAYMENTS......................................................27
20. NOTICES............................................................27
21. DISPUTES AND GOVERNING LAWS........................................28
22. PATENT MARKING.....................................................29
23. COPYRIGHT MARKING..................................................29
24. GOVERNMENT APPROVAL OR REGISTRATION................................30
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25. EXPORT CONTROL LAWS................................................30
26. FORCE MAJEURE......................................................30
27. UNITED STATES PREFERENCE...........................................31
28. PROPRIETARY INFORMATION............................................31
29. MISCELLANEOUS......................................................31
30. QUALITY CONTROL....................................................32
31. TRADEMARK USE AND OWNERSHIP........................................33
EXHIBIT A - LICENSED PATENTS AND LICENSED COPYRIGHTS
EXHIBIT B - RIGHTS GRANTED AND PERFORMANCE OBLIGATIONS
EXHIBIT C - FEES AND ROYALTIES
EXHIBIT D - MUTUAL NONDISCLOSURE AGREEMENT
EXHIBIT E - LICENSED TRADEMARKS
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LIMITED EXCLUSIVE PATENT, COPYRIGHT AND
TRADEMARK LICENSE AGREEMENT
FOR PEREGRINE(TM) DOSE CALCULATION SYSTEM
FOR RADIATION TREATMENT PLANNING
This Agreement is effective on the Effective Date by and between The Regents of
the University of California ("THE REGENTS"), under its U.S. Department of
Energy Contract No. W-7405-ENG-48 to manage and operate ▇▇▇▇▇▇▇▇ Livermore
National Laboratory ("LLNL"), and NOMOS Corporation, a Delaware corporation
having its principal place of business at ▇▇▇▇ ▇▇▇▇▇▇▇-▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇
▇▇▇▇▇. THE REGENTS is a corporation organized and existing under the laws of the
State of California, with its principal office at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇
▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇. THE REGENTS and NOMOS Corporation are referred to
jointly as "Parties."
1. BACKGROUND
1.1 Certain inventions characterized as the PEREGRINE(TM) Dose Calculation
System ("Inventions") and certain copyrightable workS characterized as
the computer program PEREGRINE(TM) version 1.1 ("Software"), described
in LLNL patents, patent applicationS and copyrights listed in Exhibit A
(LICENSED PATENTS AND LICENSED COPYRIGHTS), which may be useful for
various radiation therapy applications, were made at LLNL and are
covered by THE REGENTS' Patent Rights and THE REGENTS' Copyright Rights
as defined in Article 2 (DEFINITIONS).
1.2 LLNL published a Commerce Business Daily announcement in which it
sought one or more industrial partners to commercialize the
PEREGRINE(TM) Dose Calculation System as a means of achieving LLNL's
objective of ubiquitous, rapid distribution of
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PEREGRINE(TM) to radiation therapy clinics. NOMOS Corporation responded
to LLNL's announcement and shares LLNL's objective IN commercializing
the PEREGRINE(TM) Dose Calculation System.
1.3 NOMOS Corporation entered into a Mutual Nondisclosure Agreement
provided in Exhibit D (MUTUAL NONDISCLOSURE AGREEMENT), which is
incorporated herein, that allowed it to evaluate its interest in taking
a license to the Inventions and Software.
1.4 NOMOS Corporation is interested in acquiring certain rights to the
Inventions and Software for the development, manufacture, and sale of
products and services based on the Inventions and Software. In addition
to selling directly to its customers, NOMOS Corporation is willing to
sell such products on an OEM basis or to sublicense Inventions and
Software to other companies, including NOMOS Corporation's competitors,
to facilitate ubiquitous, rapid distribution of the PEREGRINE(TM) Dose
Calculation System.
1.5 THE REGENTS is willing to grant such rights so that the Inventions and
Software may be developed and used to the fullest extent for the
benefit of the Unites States' economy and the general public.
1.6 NOMOS Corporation recognizes that royalties due under this Agreement
will be paid on licensed patent applications, issued patents, and
copyrights.
1.7 The Parties have entered into a Work for Others agreement to facilitate
transfer of the PEREGRINE(TM) Dose Calculation System to NOMOS
Corporation for commercial development and to further develop the
Inventions and Software.
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1.8 NOMOS Corporation is a "small entity" as defined in 37 CFRss.1.9.
1.9 NOMOS Corporation is a "small business firm" as defined at section 2 of
Pub. L. 85-536 (15 U.S.C.ss.632).
1.10 THE REGENTS has established and desires to preserve, protect, enhance
and promote the international reputation and prestige of PEREGRINE
technology and its derivatives including products and services
incorporating or based on PEREGRINE technology, and NOMOS Corporation
acknowledges and recognizes this reputation and prestige.
1.11 THE REGENTS owns and uses certain trademarks and service marks
associated with PEREGRINE technology.
1.12 NOMOS Corporation desires a license to use certain of THE REGENTS'
trademarks and service marks on, or in connection with, products and
services based on or using PEREGRINE technology and THE REGENTS is
willing, subject to the terms and conditions recited herein, to grant
such a license.
THEREFORE, the Parties agree as follows:
2. DEFINITIONS
2.1 "Effective Date" means July 20, 1999.
2.2 "Field of Use" is the application or use defined in Exhibit B (RIGHTS
GRANTED AND PERFORMANCE OBLIGATIONS).
2.3 "Government" means the United States Government.
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2.4 "Lease Price" means gross income from a contract by which LICENSEE or
its sublicensees conveys Licensed Products for a specified term at a
specified fee.
2.5 "Licensed Methods" are any methods, procedures, processes, or other
subject matter whose use or practice would constitute an infringement
of THE REGENTS' Patent Rights but for the license granted to LICENSEE
under this Agreement.
2.6 "Licensed Patents" are:
2.6.1 U.S. patents and U.S. patent applications specified in Exhibit
A (LICENSED PATENTS AND LICENSED COPYRIGHTS), and U.S. patents
AMENDMENT ONE resulting from these applications and
continuations of these applications, including divisionals
resulting from these applications, but not including
continuation-in-part applications resulting from these
applications;
2.6.2 reissues of 2.6.1;
2.6.3 foreign patent applications filed under Article 11 (PATENT
PROSECUTION AND MAINTENANCE) and patents resulting from these
applications; and,
2.6.4 Licensable WFO Subject Inventions.
2.7 "Licensed Products" are products that 1) incorporate or are produced by
the practice of subject matter claimed in Licensed Patents, and whose
manufacture, use, sale, import, or offer for sale would constitute an
infringement of THE REGENTS' Patent Rights, or 2) duplicate, display,
perform, or are Derivative Works of the subject matter of Licensed
Copyrights and whose duplication, distribution, display, or performance
would constitute
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an infringement of Licensed Copyrights, but for the license granted to
LICENSEE under this Agreement.
2.8 "LICENSEE" means NOMOS Corporation.
2.9 Net Sales," as used in this Agreement to compute royalties, means the
aggregate Sale Price, Lease Price, and Service Price of Licensed
Products and Licensed Methods by LICENSEE and any sublicensees in
transactions throughout the world with independent third parties for
cash, or other consideration as mutually agreed by the Parties, using
generally accepted accounting principles.
No deductions will be made from Net Sales for commissions paid to
individuals whether they are with independent sales agencies or
regularly employed by LICENSEE and on its payroll, or for cost of
collections.
2.10 "Sale Price" means the gross invoice selling price after deducting:
2.10.1 Discounts allowed in amounts customary in the trade;
2.10.2 Sales, tariff duties or use taxes directly imposed and with
reference to particular sales;
2.10.3 Actually paid and limited to rejections, returns, and prompt
payment and volume discounts granted to customers of Licensed
Products, whether in cash or Licensed Products in lieu of
cash;
2.10.4 Freight, transport packing, insurance charges associated with
transportation; and
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2.10.5 Taxes, tariff, or import/export duties based on sales when
included in gross sales, but not value-added taxes or taxes
assessed on income derived from such sales.
The Sale Price of Licensed Products and Licensed Methods that are
disposed of other than by sale or lease is LICENSEE'S gross invoice
selling price for products of similar kind and quality, sold in similar
quantities provided that the Sale Price shall not be less than the
minimum value established in section C.2 of Exhibit C (FEES AND
ROYALTIES). If LICENSEE is not currently offering comparable products
for sale, then the Sale Price is the average gross invoice selling
price at which products of similar kind and quality, sold in similar
quantities, are currently offered for sale by other manufacturers. If
comparable products are not currently sold or offered for sale by
others, then the Sale Price will be LICENSEE'S cost of manufacture,
determined by LICENSEE'S customary accounting procedures, plus
LICENSEE'S standard markup.
2.11 "Sales of Licensed Products" means sale or lease of Licensed Products
or performance of services using Licensed Products, Licensed Methods or
Licensed Copyrights.
2.12 "Service Price" means gross income from services performed by LICENSEE
or its sublicensees using Licensed Products, Licensed Methods, or
Licensed Copyrights, including gross income for support, maintenance,
and repair services.
2.13 "THE REGENTS' Patent Rights" are THE REGENTS' rights in Licensed
Patents under applicable patent laws.
2.14 "THE REGENTS' Copyright Rights" means THE REGENTS' rights in Licensed
Copyrights under applicable copyright laws.
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2.15 "Licensed Copyrights" means the copyrighted works listed in Exhibit A
(LICENSED PATENTS AND LICENSED COPYRIGHTS) and Licensable WFO Computer
Software.
2.16 "Derivative Work" means a work that is based on one or more
pre-existing works and that, if reproduced, distributed to the public,
or displayed publicly or performed publicly without permission of the
owner of the pre-existing work, would constitute copyright
infringement.
2.17 "Licensable WFO Subject Inventions" means Contractor's Subject
Inventions arising from the WFO to which rights have been waived to THE
REGENTS by DOE for licensing in accordance with THE REGENTS' Contract
No. W-7405-ENG-48 with DOE.
2.18 "WFO" means Work for Others Agreement No. L-8788 by and between the
Parties.
2.19 Licensable WFO Computer Software" means Contractor's Computer Software
arising from the WFO in which the Contractor has been given permission
to assert copyright in accordance with its prime contract with DOE.
2.20 "Use Sublicense" means any agreement by LICENSEE or a sublicensee which
grants to end users, only the right to use, on a single computer or
compute server, object code versions of Licensed Products.
2.21 "THE REGENTS' Trademarks" means any trademark, service ▇▇▇▇, logo,
insignia, seal, design or other symbol/device used by THE REGENTS and
associated with or referring to PEREGRINE technology, and its
derivatives, and products and services based on PEREGRINE technology.
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2.22 "Licensed Trademarks" means THE REGENTS' Trademarks listed in the
attached Exhibit E (LICENSED TRADEMARKS), incorporated herein by this
reference.
2.23 "Territory" means the countries listed in Exhibit E.
3. LICENSE GRANT
3.1 The license rights granted to LICENSEE by THE REGENTS are set forth in
Exhibit B (RIGHTS GRANTED AND PERFORMANCE OBLIGATIONS).
3.2 The Government retains a paid-up, royalty-free, nontransferable,
worldwide, irrevocable license to practice Licensed Patents by or on
behalf of the Government. The Government has certain other rights under
35 U.S.C.ss.ss.200-212 and applicable regulations.
3.3 The Government retains for itself and others acting on its behalf a
paid-up, royalty-free, worldwide, irrevocable license in Licensed
Copyrights to reproduce, prepare Derivative Works, and perform publicly
and display publicly. Beginning ten (10) years after January 14, 1999,
subject to possible five-year renewals, the Government is granted for
itself and others acting on its behalf a paid-up, nonexclusive,
irrevocable worldwide license in Licensed Copyrights to reproduce,
prepares, distribute copies to the public, perform publicly and display
publicly, and to permit others to do so.
3.4 The Government retains for itself the right to indicate on any similar
goods or services produced by or for the Government that such goods
were derived from and are a DOE version of the goods or services
protected by Licensed Trademarks, with the trademark and the owner
thereof being specifically identified. In addition, the Government
shall have the right to use Licensed Trademarks in print or
communications media.
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3.5 THE REGENTS reserves all rights not otherwise granted in this Agreement
and the right to use THE REGENTS' Patent Rights, THE REGENTS' Copyright
Rights, and THE REGENTS' Trademark Rights for educational and research
purposes.
4. SUBLICENSING RIGHTS AND OBLIGATIONS
4.1 The sublicensing rights granted to LICENSEE by THE REGENTS are set
forth in Exhibit B (RIGHTS GRANTED AND PERFORMANCE OBLIGATIONS),
Paragraph B.2.
4.2 LICENSEE will provide THE REGENTS with an executed copy of each
sublicense within thirty (30) days of execution of the agreement.
4.3 LICENSEE must include in any sublicense all the rights and obligations
due THE REGENTS and the Government set forth in this Agreement.
4.4 LICENSEE will promptly forward to THE REGENTS any reports and
statements it receives from sublicensees under Article 4.3.
4.5 LICENSEE must include in all sublicenses the notice that upon
termination of this Agreement for any reason, THE REGENTS will
automatically succeed to all rights of LICENSEE arising from
sublicenses granted under this Agreement.
5. FEES, ROYALTIES AND PAYMENTS
5.1 As partial consideration for rights granted to LICENSEE, LICENSEE will
pay to THE REGENTS a license issue fee and maintenance fees as set
forth in Exhibit C (FEES AND ROYALTIES).
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5.2 As further consideration for rights granted to LICENSEE, LICENSEE will
pay to THE REGENTS a minimum annual royalty and an earned royalty based
on Net Sales as set forth in Exhibit C (FEES AND ROYALTIES).
5.3 LICENSEE will pay royalties to THE REGENTS according to the schedule
specified in Article 7 (PROGRESS AND ROYALTY REPORTS).
5.4 LICENSEE will pay all fees and royalties in U.S. dollars collectible at
par in San Francisco, California. When Licensed Products are sold for
currencies other than U.S. dollars, earned royalties will first be
determined in the foreign currency of the country in which the Licensed
Products were sold and then converted into equivalent U.S. dollars. The
exchange rate is that rate quoted in the Wall Street journal on the
last business day of the reporting period and is quoted as local
currency per U.S. dollar. LICENSEE will be responsible for all bank
transfer charges.
5.5 Notwithstanding the provisions of Article 26 (FORCE MAJEURE), if at any
time legal restrictions would prevent LICENSEE from making payment of
part or all of any royalties in any country outside the U.S. from
LICENSEE'S source of funds outside the U.S., LICENSEE will convert the
amount owed to THE REGENTS into U.S. funds and pay THE REGENTS directly
from LICENSEE'S U.S. source of funds.
5.6 No royalties are due on Net Sales to the Government. LICENSEE will
reduce the amount charged for such sales by an amount equal to the
royalty otherwise due THE REGENTS.
6. PERFORMANCE OBLIGATIONS
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6.1 LICENSEE, upon execution of this Agreement, will diligently proceed
with development, regulatory approvals, manufacture, and sale of
Licensed Products and use of Licensed Methods, and earnestly and
diligently endeavor to market the same as specified in Exhibit B
(RIGHTS GRANTED AND PERFORMANCE OBLIGATIONS).
6.2 During the term of this Agreement, LICENSEE will demonstrate a
continuing effort to commercialize and sell Licensed Products and use
Licensed Methods to meet market demand.
6.3 If LICENSEE does not meet the performance obligations specified in
Exhibit B (RIGHTS GRANTED AND PERFORMANCE OBLIGATIONS), THE REGENTS may
at its sole option: (a) convert the limited exclusive license for
Licensed Patents, Licensed Copyrights(and Licensed Trademark to a
nonexclusive license; (b) negotiate with LICENSEE a new schedule and
conditions for continuation of a limited exclusive license; or (c)
terminate this Agreement.
6.4 THE REGENTS will notify LICENSEE if THE REGENTS is approached by a
third party seeking a license to make, use, or sell Licensed Products
in LICENSEE'S Field of Use. LICENSEE will negotiate in good faith with
that third party to grant a sublicense for any Licensed Patents or
Licensed Copyrights ~r Licensed Trademarks in the market for which
LICENSEE and existing sublicensees are not meeting commercial demand.
The determination to grant a sublicense may be based on LICENSEE'S
business interests. LICENSEE will provide THE REGENTS with
justification for denying any such sublicense.
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6.5 During the term of this Agreement, LICENSEE will conduct normal,
continuous business operations. If LICENSEE seeks protection under any
United States bankruptcy proceedings during the term of this Agreement,
LICENSEE will notify THE REGENTS in writing no later than seventy-two
(72) hours after the bankruptcy filing. THE REGENTS has the option to
terminate this Agreement upon a bankruptcy filing by the LICENSEE.
7. PROGRESS AND ROYALTY REPORTS
7.1 SEMI-ANNUAL PROGRESS REPORT: LICENSEE will submit to THE REGENTS
semi-annual progress reports according to the following schedule:
DUE DATE FOR PREVIOUS PERIOD
February 28 July 1 - December 31
August 31 January 1 - June 30
The progress report must cover LICENSEE'S activities in meeting the
performance obligations set forth in Article 6 (PERFORMANCE
OBLIGATIONS) and Exhibit B (RIGHTS GRANTED AND PERFORMANCE
OBLIGATIONS), and must include at a minimum the following information:
Name of LICENSEE
License Number
Date of Report
Reporting period
Summary of work completed
Summary of work in progress
Current schedule of anticipated events or milestones
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Description of Licensed Products or Licensed Methods under development
Licensed Patents, Licensed Copyrights, and Licensed Trademarks
practiced or incorporated into each Licensed Product and Licensed
Method under development
Anticipated market introduction date of Licensed Products/ Methods
Commercial name of Licensed Products/ Methods
A summary of resources (dollar value) spent in the reporting period on
commercialization efforts
Name and summary of activities of sublicensees, if any
Changes in corporate ownership (see Article 18, ASSIGNABILITY)
Change in small entity status (see Article 1, BACKGROUND)
Addition of and/or participation in an affiliate
Existence of and/or participation in a joint venture
7.2 FIRST COMMERCIAL SALE: Within thirty (30) days following the first
commercial sale of each type of Licensed Product in the U.S. and each
country outside the U.S. by LICENSEE, LICENSEE will report to THE
REGENTS, at a minimum, the following information:
License Number
Name of LICENSEE
Date of Report
Date of First Commercial Sale or Lease
Place of First Commercial Sale or Lease
Description of Licensed Products /Methods sold or leased
Licensed Patents, Licensed Copyrights, and Licensed Trademarks
practiced or incorporated
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7.3 QUARTERLY WRITTEN ROYALTY REPORTS: After the First Commercial Sale of
Licensed Products or Licensed Methods anywhere in the world by
LICENSEE, LICENSEE will submit quarterly written royalty reports to THE
REGENTS as follows:
Due date For previous period
February 28 October 1 - December 31
May 31 January 1 - March 31
August 31 April 1 - June 30
November 30 July 1 - September 30
If LICENSEE has not sold or used any Licensed Products or Licensed
Methods during the reporting period, LICENSEE will so state in the
royalty report.
The quarterly royalty report must include at a minimum the following
information:
License Number
Name of LICENSEE
Date of Report
Reporting period
Report of sales:
For each type of Licensed Products /Methods:
Name/ description of each type of product or process
A. Domestic sales:
1. Description of Licensed Products/ Methods
2. Unit price (sale, lease, and/or use)
3. Units sold in U.S.
4. Units leased in U.S.
5. Gross sales in U.S.
6. Net Sales in U.S.
7. Accrued royalties
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8. If Government approval requirements apply to
sale/use of the Licensed Product/Method (see
Article 24, GOVERNMENT APPROVAL OR
REGISTRATION), provide details.
B. Foreign sales:
1. Country of sales
2. Description of Licensed Products/ Methods
3. Unit price (sale, lease, and/or use)
4. Units sold in each country
5. Units leased in each country
6. Gross sales in each country
7. Net Sales in each country
8. Monetary exchange rate
9. Accrued royalties in $U.S.
10. If foreign government approval/ registration
requirements apply to sale/use of the
Licensed Product/Method (see Article 24,
GOVERNMENT APPROVAL OR REGISTRATION),
provide details.
C. Government Sales:
1. Description of Licensed Products /Methods
2. Unit price (sale, lease, and/or use)
3. Units sold
4. Units leased
5. Gross sales
6. Net Sales to the Government
Provide information A-C for each type of product or process sold
D. Royalties Due THE REGENTS
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Minimum Royalty paid Total accrued royalties to date Royalties Due
for this calendar year for this calendar year
7.4 LICENSEE will provide THE REGENTS with an annual audited statement of
royalty accounts within sixty (60) days after the end of each calendar
year. THE REGENTS will protect such statements as Proprietary
Information and not disseminate them unless required by law.
7.5 LICENSEE will report in writing to THE REGENTS, within ten (10) days of
their occurrence, dates of the following events pertaining to
performance obligations specified in Exhibit B (RIGHTS GRANTED AND
PERFORMANCE OBLIGATIONS):
7.5.1 LICENSEE'S filings of relevant regulatory applications
pertaining to Licensed Products in accordance with B.5.1.
7.5.2 Each grant of clearance by the FDA for Licensed Products.
7.5.3 LICENSEE'S compliance with performance obligations specified
in B.5.2, B.5.4, B.5.5, B.5.6, and B.5.7.
8. BOOKS AND RECORDS
8.1 LICENSEE will keep books and records accurately showing the
manufacture, use, sale, and lease of Licensed Products, Licensed
Methods and Licensed Copyrights, and Sales of Licensed Products under
this Agreement. LICENSEE will preserve such books and records for at
least five (5) years after the date of the royalty payment to which
they
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apply. Such books and records will be open for inspection by
representatives or agents of THE REGENTS at all reasonable times, with
reasonable notice given.
8.2 THE REGENTS will pay the costs incurred by its representatives or
agents to examine LICENSEE'S books and records. If there is an error
adverse to THE REGENTS in LICENSEE'S royalty accounting, then LICENSEE
will pay THE REGENTS within ten (10) days the amount necessary to
correct such error. If there is an error adverse to THE REGENTS in
LICENSEE'S royalty accounting of more than ten percent (10%) of the
total royalties due for any year, then LICENSEE will pay the costs
incurred by THE REGENTS' representatives and agents for such
examination.
8.3 LICENSEE will provide THE REGENTS with an annual audited financial
statement of LICENSEE, including at a minimum a balance sheet and
operating statement or LICENSEE'S annual report. Such statement will be
due to THE REGENTS within one hundred twenty (120) days following the
close of LICENSEE'S fiscal year to which such statement relates.
9. TERM
9.1 The term of this Agreement is the longer of either the term of the
license to Licensed Patents or the term of the license to Licensed
Copyrights.
9.2 The term of the license to Licensed Patents will commence on the
Effective Date and, unless terminated by operation of law or by acts of
the Parties under this Agreement, will remain in effect until the
expiration or abandonment of all Licensed Patents.
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9.3 The term of the license to Licensed Copyrights will commence on the
Effective Date and, unless terminated by operation of law or by acts of
the Parties under this Agreement, will remain in effect for ten (10)
years from January 14, 1999, the date on which THE REGENTS received
permission to assert copyright. The term of the license to Licensed
Copyrights may be renewed for additional five-year periods for the life
of the copyright upon mutual written agreement of the Parties.
10. TERMINATION AND DISPOSITION OF LICENSED PRODUCTS
10.1 If LICENSEE fails to perform any material term or covenant of this
Agreement, THE REGENTS may give written notice to LICENSEE that if
LICENSEE has not cured such failure within sixty (60) days after the
effective date of receipt of the notice, this Agreement will terminate
at the end of such sixty- (60) day period or at the end of such longer
period as may be set forth in THE REGENTS' notice.
10.2 LICENSEE may terminate this Agreement by giving at least thirty (30)
days prior written notice to THE REGENTS.
10.3 Termination of this Agreement will not relieve LICENSEE of any
obligation or liability accrued hereunder prior to such termination,
nor rescind any payments due or paid to THE REGENTS prior to the time
such termination becomes effective. Such termination will not affect,
in any manner, any rights of THE REGENTS arising under this Agreement
prior to such termination. Any and all obligations of the Parties under
this Agreement will remain in effect until properly fulfilled or
otherwise discharged, notwithstanding the completion or early
termination of this Agreement.
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10.4 Within thirty (30) days after termination of this Agreement by either
Party, LICENSEE will provide THE REGENTS with a written inventory of
all Licensed Products in process of manufacture or in stock on the date
of termination. LICENSEE may complete Licensed Products in the process
of manufacture at the time of termination, and may dispose of Licensed
Products for sixty (60) days after the date of termination provided
that LICENSEE pays royalties to THE REGENTS on such dispositions. At
the conclusion of the sixty (60) day period, LICENSEE will destroy any
remaining Licensed Products in stock or in process of manufacture and
certify such destruction to THE REGENTS.
10.5 LICENSEE may not practice Licensed Patents or use Licensed Copyrights
or Licensed Trademarks after the date of termination of this Agreement
except as necessary to complete the manufacture of Licensed Products as
permitted under Article 10.4.
10.6 LICENSEE agrees that all legal rights and goodwill associated with THE
REGENTS' Trademarks shall remain the property of THE REGENTS and
LICENSEE shall make no claim thereto.
10.7 This Agreement will terminate, effective thirty (30) days after the
effective date of notice by THE REGENTS, if LICENSEE ceases to carry on
its business.
11. PATENT PROSECUTION AND MAINTENANCE
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11.1 THE REGENTS will prosecute U.S. patent applications and maintain U.S.
patents licensed under this Agreement at THE REGENTS' expense, unless
otherwise agreed by the Parties.
11.2 LICENSEE may request foreign rights in Licensed Patents, if such rights
are available. Unless requested herein, LICENSEE must request in
writing such rights, and specify the countries in which it wants
rights, within seven (7) months after the filing date of the U.S.
applications. Failure to request such rights will be considered an
election not to seek foreign rights. THE REGENTS may file patent
applications at its own expense in any country in which LICENSEE has
not elected to secure foreign rights, and LICENSEE has no rights to any
such foreign applications and resultant patents.
11.3 LICENSEE will pay all costs, including those incurred by THE REGENTS
prior to the Effective Date, associated with preparation, filing,
prosecution, and maintenance of Licensed Patents in foreign countries
in which LICENSEE obtains rights under this Agreement. All Licensed
Patents will be held in the name of THE REGENTS and obtained using
counsel selected by THE REGENTS.
11.4 LICENSEE may terminate its license to foreign patent applications or
patents, and its obligation to pay any further costs for those foreign
rights, upon ninety (90) days written notice to THE REGENTS. THE
REGENTS or the Government may, at its sole discretion and expense,
continue prosecution and/or maintenance of any patents or applications
for which LICENSEE has relinquished rights.
12. PATENT, COPYRIGHT, AND TRADEMARK INFRINGEMENT
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12.1 If LICENSEE learns of the possible infringement by a third party of any
Licensed Patents, Licensed Copyrights, or Licensed Trademarks, LICENSEE
will inform THE REGENTS in writing within thirty (30) days and provide
all known evidence of the infringement. LICENSEE will not contact such
third party concerning the infringement without prior written approval
of THE REGENTS. The Parties will use their best efforts to terminate
such infringement without litigation.
12.2 LICENSEE may request in writing that THE REGENTS take legal action
against an infringer of any Licensed Patents, Licensed Copyrights, or
Licensed Trademarks, which request must include reasonable evidence of
the infringement and of potential damages to LICENSEE. Within one
hundred (100) days after the date of receipt by THE REGENTS of
LICENSEE'S request, if the infringement continues, THE REGENTS will
notify LICENSEE in writing that THE REGENTS will either:
12.2. Commence suit on its own account; or
12.2.2 Refuse to participate in such suit. LICENSEE may thereafter
bring suit for infringement at its own expense if, and only
if, THE REGENTS elects not to commence suit and if the
infringement occurred during the period and in a jurisdiction
where LICENSEE has exclusive rights under this Agreement.
However, in the event LICENSEE elects to bring suit in
accordance with this Article, THE REGENTS may thereafter join
such suit at its own expense. If THE REGENTS elects to not
participate in such suit, LICENSEE may join THE REGENTS in any
suit in which THE REGENTS is a necessary party for the suit
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to proceed, and if so joined the LICENSEE will pay all
reasonable costs of THE REGENTS associated with joining the
suit as a necessary party to the litigation.
12.3 Any legal or equitable action brought under this Article 12 will be at
the expense of the Party bringing such legal or equitable action and
all recoveries will belong to such Party. Legal or equitable action
brought jointly by THE REGENTS and LICENSEE and participated in by both
will be at the joint expense of the Parties in such proportions as are
agreed to in writing, and all recoveries will be shared by them in
proportion to the expense paid by each Party, or otherwise as they may
agree in writing.
12.4 The Parties will cooperate with each other in legal and equitable
proceedings instituted against an infringing third party, but such
cooperation by a Party will be at the expense of the Party bringing
such legal or equitable action; if both Parties bring the action, the
principles of Article 12.3 will apply. Such legal or equitable action
will be controlled by the Party bringing the legal or equitable action,
except that THE REGENTS may be represented by counsel of its choice in
any action brought by LICENSEE.
13. USE OF NAMES AND TRADEMARKS
Except for the use of Licensed Trademarks as authorized herein, neither
Party has any right to use any name, trade name, trademark, or other
designation of the other Party (including any contraction,
abbreviation, or simulation) in advertising, publicity, or other
promotional activities. Unless required by law, the use of the name
"▇▇▇▇▇▇▇▇ Livermore National Laboratory," or "The Regents of the
University of California," or the name of any University of California
campus by LICENSEE is expressly prohibited under California Education
Code ss.92000. Upon request of THE REGENTS,
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LICENSEE will issue express disclaimers of any support, endorsement, or
sponsorship by THE REGENTS of LICENSEE or LICENSEE'S activities.
14. LIMITED WARRANTY
14.1 THE REGENTS has the right to grant the license granted in this
Agreement.
14.2 THIS LICENSE AND THE ASSOCIATED INVENTIONS AND SOFTWARE ARE PROVIDED
WITHOUT WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE
OR ANY OTHER WARRANTY, EXPRESS OR IMPLIED. THE REGENTS AND DOE MAKE NO
REPRESENTATION OR WARRANTY THAT LICENSED PRODUCTS OR LICENSED METHODS
WILL NOT INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK OR OTHER PROPRIETARY
RIGHT.
14.3 IN NO EVENT WILL THE REGENTS OR DOE BE LIABLE FOR ANY INCIDENTAL,
SPECIAL, OR CONSEQUENTIAL DAMAGES RESULTING FROM EXERCISE OF THIS
LICENSE OR THE USE OF THE SOFTWARE, INVENTIONS, LICENSED METHODS, OR
LICENSED PRODUCTS, OR LICENSED TRADEMARKS.
14.4 Nothing in this Agreement will be interpreted as:
14.4.1 A warranty or representation by THE REGENTS as to the validity
or scope of Licensed Patents, Licensed Copyrights, or Licensed
Trademarks; or
14.4.2 A warranty or representation that anything made, used,
duplicated, displayed, performed, sold, or otherwise disposed
of under the license granted in this
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Agreement is or will be free from infringement of
intellectual property rights of third parties; or
14.4.3 Any obligation to bring suit against a third party for
patent, copyright, or trademark infringement; or
14.4.4 Conferring by implication, estoppel, or otherwise any license
or rights under 1) any patents of THE REGENTS other than
Licensed Patents, regardless of whether such patents are
dominant or subordinate to Licensed Patents or 2) any
copyrights of THE REGENTS other than Licensed Copyrights as
defined in this Agreement or 3) any trademarks or service
marks of THE REGENTS other than Licensed Trademarks as defined
in this Agreement; or
14.4.5 An obligation to furnish to LICENSEE or any third party any
know-how, improvements, or Derivative Works not specifically
provided in this Agreement.
15. INDEMNIFICATION
LICENSEE will, and will require its sublicensees to, indemnify, hold
harmless, and defend THE REGENTS, DOE, their officers, employees, and
agents; the sponsors of the research that led to the Inventions,
Software, and Trademarks; and the inventors and authors against any
claims, suits, losses, liabilities, damages, costs, fees, and expenses
resulting from or arising out of exercise of this license or any
sublicense. LICENSEE will pay any and all costs, including reasonable
attorney fees, incurred by THE REGENTS in enforcing this
indemnification.
16. INSURANCE
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16.1 LICENSEE will insure its activities relating to this Agreement at its
own cost with an insurance company acceptable to THE REGENTS. LICENSEE
will obtain, keep in force, and maintain insurance as follows with an
insurance company acceptable to THE REGENTS or an equivalent program of
self-insurance: Comprehensive or Commercial Form General Liability
Insurance, including contractual liability and product liability, with
coverage as follows:
16.1.1 Each occurrence coverage of not less than One Million Dollars
($1,000,000.00); and
16.1.2 Product Liability Insurance: completed operations aggregate
coverage of not less than Ten Million Dollars
($10,000,000.00); and
16.1.3 Personal and Advertising Injury: coverage of not less than One
Million Dollars ($1,000,000.00); and
16.1.4 General Aggregate (Commercial Form Only): coverage of not less
than Five Million Dollars ($5,000,000.00).
These coverages do not limit the liability of LICENSEE to THE REGENTS
in any way. LICENSEE will provide THE REGENTS, upon request, with
certificates of insurance or self-insurance, including renewals that
show compliance with these requirements. LICENSEE'S failure to maintain
such required insurance will be considered a material breach of this
Agreement.
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16.2 If the required insurance is written on a claims-made form, coverage
must provide a retroactive date of placement before or coinciding with
the Effective Date of this Agreement.
16.3 LICENSEE will maintain the general liability insurance specified in
this Article 16 during the period that the Licensed Patents, Licensed
Copyrights, or Licensed Trademarks are being used and/or Licensed
Products are being sold or otherwise commercially distributed by
LICENSEE, and for a period of not less than five (5) years thereafter.
16.4 LICENSEE'S insurance coverage must:
16.4.1 Provide for at least thirty (30) days advance written notice
to THE REGENTS of cancellation or any modification; 16.4.2
Indicate that DOE, THE REGENTS, and their respective officers,
employees, students, and agents, are endorsed on the policy as
additional named insureds; and
16.4.3 Include a provision that the coverage is primary and does not
participate with, or is in excess of, any valid and
collectible insurance, program, or self-insurance carried or
maintained by THE REGENTS.
17. WAIVER
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17.1 No provision of this Agreement is deemed waived and no breach excused
unless such waiver or consent is made in writing and signed by the
Party to have waived or consented.
17.2 Failure on the part of either Party to exercise or enforce any right of
such Party under this Agreement will not be a waiver by such Party of
any right, or operate to bar the enforcement or exercise of the right
at any time thereafter.
18. ASSIGNABILITY
This Agreement is binding on and inures to the benefit of THE REGENTS,
its successors and assigns, but is personal to LICENSEE. Any assignment
or bankruptcy assumption of this Agreement requires prior written
consent of THE REGENTS which consent shall not be unreasonably
withheld.
19. LATE PAYMENTS
If THE REGENTS does not receive payments or fees due from LICENSEE
hereunder when due, LICENSEE must pay such payments or fees within
sixty (60) days plus interest charges at the rate of ten percent (10%)
simple interest per annum from the date on which the payment was
originally due, or THE REGENTS may terminate this Agreement in
accordance with its terms.
20. NOTICES
Any report, payment, notice, or other communication that either Party
receives under this Agreement must be in writing and will be properly
given and effective on the date of delivery if delivered in person
(including delivery by courier service), or the fifth (5th)
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day after mailing if mailed by first-class certified mail, postage
paid, to the addresses given below (or to an address designated by
written notice to the other Party), or the date of facsimile with
confirmed receipt.
In the case of LICENSEE: NOMOS Corporation
▇▇▇▇ ▇▇▇▇▇▇▇-▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: President
Phone: ▇▇▇-▇▇▇-▇▇▇▇
Fax: ▇▇▇-▇▇▇-▇▇▇▇
In the case of THE REGENTS:
All correspondence, original progress ▇▇▇▇▇▇▇▇ Livermore National
reports, and royalty reports: Laboratory Industrial Partnerships
and Commercialization ▇.▇. ▇▇▇
▇▇▇, ▇-▇▇▇, ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇,
▇-▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: Director, IPAC
Fax: ▇▇▇-▇▇▇-▇▇▇▇
Payments and copies of corresponding ▇▇▇▇▇▇▇▇ Livermore National
royalty reports: Laboratory ▇.▇. ▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇▇
21. DISPUTES AND GOVERNING LAWS
The Parties will attempt to jointly and promptly resolve any disputes
arising from this Agreement. If the Parties are unable to resolve a
dispute within a reasonable time from one Party's written notice to the
other that dispute resolution has begun, then either Party may commence
proceedings in a court of competent jurisdiction. This Agreement will
be governed by the laws of the State of California, U.S.A., without
regard to such State's conflict of laws provisions.
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22. PATENT MARKING
LICENSEE will ▇▇▇▇ all Licensed Products and their containers that are
made, used, sold, or otherwise disposed of under this Agreement in
accordance with applicable patent marking laws.
23. COPYRIGHT MARKING
For all Licensed Products that incorporate Licensed Copyrights,
LICENSEE will affix to all copies of such Licensed Products and their
containers that are made, used, or sold or otherwise distributed under
this Agreement:
a) the proper copyright notice in accordance with applicable
copyright marking laws; and
b) the following notice:
"NOTICE: The Government is granted for itself and others acting on its
behalf a paid-up, nonexclusive, irrevocable, worldwide license in this
data to reproduce, prepare Derivative Works, and perform publicly and
display publicly. Beginning ten (10) years after January 14, 1999, and
subject to any subsequent five (5) year renewals, the Government is
granted for itself and others acting on its behalf a paid-up,
nonexclusive, irrevocable, worldwide license in this data to reproduce,
prepare Derivative Works, distribute copies to the public, perform
publicly and display publicly, and to permit others to do so. NEITHER
THE UNITED STATES NOR THE UNITED STATES DEPARTMENT OF ENERGY, NOR THE
REGENTS OF THE UNIVERSITY OF CALIFORNIA, NOR ANY OF THEIR EMPLOYEES,
MAKES ANY WARRANTY,
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EXPRESS OR IMPLIED, OR ASSUMES ANY LEGAL LIABILITY OR RESPONSIBILITY
FOR THE ACCURACY, COMPLETENESS, OR USEFULNESS OF ANY INFORMATION,
APPARATUS, PRODUCT, OR PROCESS DISCLOSED, OR REPRESENTS THAT ITS USE
WOULD NOT INFRINGE PRIVATELY OWNED RIGHTS."
24. GOVERNMENT APPROVAL OR REGISTRATION
If this Agreement or any associated transaction is required by the law
of any jurisdiction to be approved, permitted, or registered with any
governmental agency, LICENSEE assumes all obligations to do so.
LICENSEE will notify THE REGENTS if LICENSEE becomes aware that this
Agreement is subject to a United States or foreign government
reporting, permitting, or approval requirement. LICENSEE will make all
necessary filings and pay all costs including fees, penalties, and all
other out-of-pocket costs associated with such reporting, permitting,
or approval process.
25. EXPORT CONTROL LAWS
LICENSEE will comply with all applicable United States and foreign laws
and regulations concerning the transfer of Licensed Products and
related technical data, including but not limited to International
Traffic in Arms Regulations (ITAR) and Export Administration
Regulations (EAR).
26. FORCE MAJEURE
The Parties will be excused from any performance required hereunder if
such performance is rendered impossible or unfeasible due to any Acts
of God, catastrophes, or other major events beyond their reasonable
control, including, without limitation, war,
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riot, and insurrection; laws, proclamations, edicts, ordinances, or
regulations; strikes, lock-outs, or other serious labor disputes; and
floods, fires, explosions, or other natural disasters. However, either
Party will have the right to terminate this Agreement pursuant to this
Article upon sixty (60) days prior written notice if either Party is
unable to fulfill its obligations under this Agreement due to any of
the causes mentioned above and such inability continues for a period of
one (1) year.
27. UNITED STATES PREFERENCE
LICENSEE agrees that any Licensed Products and Licensed Methods for
applications, use, or sale shall be manufactured substantially in the
United States.
28. PROPRIETARY INFORMATION
The term of the Mutual Nondisclosure Agreement (MNDA) between the
Parties, attached as Exhibit D (MUTUAL NONDISCLOSURE AGREEMENT), is
hereby extended for the term of this Agreement. The confidentiality
obligation of the MNDA will also apply to any other Proprietary
Information provided in connection with this Agreement that is clearly
marked in accordance with the MNDA, such as patent prosecution,
engineering drawings, process and technical information, and other
related information not contemplated when the MNDA was executed.
29. MISCELLANEOUS
29.1 The headings of the Articles of this Agreement are for reference only
and do not affect the interpretation of this Agreement.
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29.2 Any amendment or modification of this Agreement must be in writing and
signed by each Party.
29.3 This Agreement, with the attached Exhibits A, B, C, D, and E embodies
the entire understanding of the Parties with respect to the subject
matter of this Agreement, and supersedes all other communications,
representations, or understandings, either oral or written, between the
Parties with respect to such subject matter.
29.4 If any provision of this Agreement is held to be invalid, illegal, or
unenforceable in any respect, such provision will be enforced to the
extent legally permissible and such invalidity, illegality, or
unenforceability will not affect any other provisions of the Agreement,
and this Agreement will be construed as if the invalid, illegal, or
unenforceable provision, or relevant portion, were never in this
Agreement.
29.5 Except as specifically provided in Exhibit B, Paragraph B.5.1, neither
Party is an agent of the other and neither will have any power to
contract for or bind the other Party for any purpose.
30. QUALITY CONTROL
30.1 LICENSEE acknowledges that maintenance of high quality of the Licensed
Products, and LICENSEE'S certification of such quality to THE REGENTS
as provided for in this Article 30, are material conditions for
LICENSEE'S use of Licensed Trademarks on Licensed Products or for
Licensed Methods.
30.2 LICENSEE will request in writing THE REGENTS' approval to use Licensed
Trademarks on each of its Licensed Products and for each of its
Licensed Methods.
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LICENSEE will include in such requests, a written certification to THE
REGENTS that Licensed Products manufactured by LICENSEE and its
sublicensees meet the performance and quality specifications of
sections 3.1 (Dose Calculation), 4.0 (Performance), and 6.0 (Quality)
of System Requirements Specifications (SRS) Document PG-0060v1.1, which
specifications may be adjusted by THE REGENTS from time to time.
LICENSEE'S initial certification will occur prior to first Sales of
Licensed Products and thereafter prior to first Sales of Licensed
Products, which Licensed Products embody changes of sufficient
magnitude to require, in accordance with LICENSEE'S normal practices,
an Engineering Change Order for product release.
30.3 All matters concerning quality control requiring the approval of THE
REGENTS or the exercise of its discretion shall be the sole subjective
discretion of THE REGENTS. A submission for approval shall be deemed
disapproved unless THE REGENTS provides LICENSEE a written notice of
approval within ten (10) days after receipt by THE REGENTS.
30.4 If at any time THE REGENTS denies or withdraws its approval of the use
of Licensed Trademarks on a Licensed Product or for a Licensed Method,
LICENSEE shall immediately cease all use of the Licensed Trademarks on
such Licensed Products and shall remove such from public sale or
distribution. In such event, THE REGENTS shall not be liable to
LICENSEE for any costs or expenses incurred by LICENSEE in the design,
manufacture, distribution, advertising, promotion, or sale of Licensed
Products for which THE REGENTS has withdrawn its approval.
31. TRADEMARK USE AND OWNERSHIP
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31.1 LICENSEE agrees to use the Licensed Trademarks only in the form and
manner and with appropriate legends, as prescribed from time to time by
THE REGENTS, and not to use any other trademark combination with any
said Licensed Trademarks without the prior written approval of THE
REGENTS. LICENSEE agrees it will not alter, modify or otherwise misuse
the Licensed Trademarks.
31.2 LICENSEE agrees that, upon request by THE REGENTS, it shall cause to
appear on or within each Licensed Product, by means of tag, label,
imprint, or other appropriate device, such trademark or [service ▇▇▇▇]
notices as THE REGENTS may from time to time, upon reasonable notice,
designate. Failure to include such notices or use of improper notices,
shall constitute grounds for termination by THE REGENTS of the grant of
rights to Licensed Trademarks to LICENSEE and shall preclude LICENSEE
from disposal of Licensed Products after such termination, as provided
in Article 10 (TERMINATION AND DISPOSITION OF LICENSED PRODUCTS).
31.3 LICENSEE acknowledges the ownership of THE REGENTS' Trademarks
including Licensed Trademarks in THE REGENTS, and LICENSEE agrees that
it will do nothing inconsistent with such ownership, and that use of
the Licensed Trademarks by LICENSEE shall inure to the benefit of THE
REGENTS. LICENSEE agrees that it shall not apply for registration or
seek to obtain ownership of any of THE REGENTS' Trademarks in any
nation.
31.4 LICENSEE agrees that it will use the Licensed Trademarks only in the
manner authorized by this Agreement and will comply with all applicable
local, State of California, Federal, and International laws.
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31.5 LICENSEE shall cooperate with THE REGENTS in the registration of
Licensed Trademarks. LICENSEE shall supply samples of such Licensed
Products or invoices or other documents relating to the sale of
Licensed Products to THE REGENTS for use in filing and prosecution of
such applications and/or registrations. LICENSEE shall cooperate with
THE REGENTS in making and terminating registered user entries. These
obligations shall survive termination of this Agreement.
31.6 LICENSEE acknowledges THE REGENTS' exclusive rights in THE REGENTS'
Trademarks and, further, acknowledges that the Licensed Trademarks are
unique and original to THE REGENTS and that THE REGENTS is the owner
thereof. LICENSEE shall not, at any time during or after the effective
term of this Agreement dispute or contest, directly or indirectly, THE
REGENTS' exclusive right and title to the Licensed Trademarks or the
validity thereof.
31.7 All rights with respect to any designs, logos or artwork that LICENSEE
may incorporate or use in conjunction with the Licensed Trademarks
shall be deemed the sole and exclusive property of THE REGENTS. In this
regard, if necessary, LICENSEE agrees to assign to THE REGENTS all
right, title and interest to and in such designs, logos and/or artwork
including all copyright and trademark rights associated therewith.
LICENSEE is not permitted to make any copyright claims to any designs
or graphics that include the Licensed Trademarks.
31.8 LICENSEE recognizes the goodwill associated with the Licensed
Trademarks and acknowledges that said goodwill belongs to THE REGENTS.
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31.9 THE REGENTS will prosecute U.S. trademark registrations and maintain
U.S. trademarks licensed under this Agreement at THE REGENTS' expense,
unless otherwise agreed by the Parties.
31.10 LICENSEE may request foreign rights in Licensed Trademarks, if such
rights are available. Unless requested herein, LICENSEE must request in
writing such rights, and specify the countries in which it wants
rights, within eighteen (18) months of the Effective Date. Failure to
request such rights will be considered an election not to seek foreign
trademark rights. THE REGENTS may register trademarks at its own
expense in any country in which LICENSEE has not elected to secure
foreign trademark rights, and LICENSEE has no rights to any such
foreign trademarks.
31.11 LICENSEE will pay all costs incurred by THE REGENTS on or after June 1,
2000, associated with preparation, registration, prosecution, and
maintenance of Licensed Trademarks in foreign countries in which
LICENSEE obtains rights under this Agreement. All Licensed Trademarks
will be held in the name of THE REGENTS and obtained using counsel
selected by THE REGENTS.
31.12 LICENSEE may terminate its license to foreign trademarks and its
obligation to pay any further costs for those trademark rights, upon
ninety (90) days written notice to THE REGENTS. THE REGENTS or the
Government may, at its sole discretion and expense, continue
prosecution and/or maintenance of any trademarks for which LICENSEE has
relinquished rights.
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EXHIBIT A - LICENSED PATENTS AND LICENSED COPYRIGHTS
A.1 THE LICENSED PATENTS ARE AS FOLLOWS:
UNITED STATES PATENTS GRANTED:
------------------- -------------------- ------------------------------- -------------------------- ------------------
Invention
Disclosure Number Patent Number Title Inventors Issue Date
------------------- -------------------- ------------------------------- -------------------------- ------------------
IL-9839 5,870,697 Calculation of Radiation ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, 2/9/99
Therapy Dose Using all ▇▇▇▇▇▇▇▇▇ ▇.
Particle Monte Carlo Transport Hartmann-Siantar, ▇▇▇▇▇
▇. ▇▇▇▇▇▇▇▇
------------------- -------------------- ------------------------------- -------------------------- ------------------
IL-10165 6,029,079 Evaluated Teletherapy Source ▇▇▇▇▇▇▇▇ ▇. ▇▇▇, Alexis 2/22/00
Library (ETSL) ▇. ▇▇▇▇▇▇ von Wittenau
------------------- -------------------- ------------------------------- -------------------------- ------------------
UNITED STATES PATENT APPLICATIONS:
------------------- ---------------- ----------------------- -------------------------- --------------- --------------
Invention Patent Title Inventors Filing Date Priority Date
Disclosure Number Application
Number
------------------- ---------------- ----------------------- -------------------------- --------------- --------------
IL-10350 09/238297 System and Method for ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇, 1/28/99 11/12/98
Radiation Dose ▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇ ▇.
Calculation Within Moses, ▇▇▇▇▇ ▇▇▇▇▇▇▇▇,
sub-Volumes of a ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇
▇▇▇▇▇ Carlo Based House, ▇▇▇▇▇▇▇▇▇
Particle Transport Hartmann-Siantar,
Grid ▇▇▇▇▇▇▇▇ ▇. ▇▇▇, ▇▇▇▇▇▇
▇. ▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇.
▇▇▇▇▇▇ Von Wittenau
------------------- ---------------- ----------------------- -------------------------- --------------- --------------
IL-10351 09/247653 FALCON: Automated Tser-▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇ 2/9/99 9/10/98
Optimization for ▇. ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ ▇.
Arbitrary Criteria Hartmann-Siantar
------------------- ---------------- ----------------------- -------------------------- --------------- --------------
IL-10472 09520287 Correlated Histogram ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ von 3/7/00 3/8/00
Representation of Wittenau
Monte Carlo Derived
Medical Accelerator
Photon-Output Phase
Spaces
------------------- ---------------- ----------------------- -------------------------- --------------- --------------
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FOREIGN PATENTS GRANTED: None
FOREIGN PATENT APPLICATIONS:
------------------- -------------------- ------------------------------- -------------------------- ------------------
Invention International
Disclosure Number Serial Number Title Inventors Filing Date
------------------- -------------------- ------------------------------- -------------------------- ------------------
IL-9839 97915859.9-EP All Calculation of Radiation ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, 2/28/97
EP Countries Therapy Dose Using All ▇▇▇▇▇▇▇▇▇ ▇.
Particle Monte Carlo Transport Hartmann-Siantar, ▇▇▇▇▇
▇. ▇▇▇▇▇▇▇▇
------------------- -------------------- ------------------------------- -------------------------- ------------------
IL-9839 521883/1977-JP Calculation of Radiation ▇▇▇▇▇▇▇ ▇ ▇▇▇▇▇▇▇▇, 2/28/97
Therapy Dose Using All ▇▇▇▇▇▇▇▇▇ ▇.
Particle Monte Carlo Transport Hartmann-Siantar, ▇▇▇▇▇
▇. ▇▇▇▇▇▇▇▇
------------------- -------------------- ------------------------------- -------------------------- ------------------
IL-9839 2248862-CA Calculation of Radiation ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, 2/28/97
Therapy Dose Using All ▇▇▇▇▇▇▇▇▇ ▇.
Particle Monte Carlo Transport Hartmann-Siantar, ▇▇▇▇▇
▇. ▇▇▇▇▇▇▇▇
------------------- -------------------- ------------------------------- -------------------------- ------------------
FUTURE PATENT RIGHTS
Licensable WFO Subject Inventions will be added by amendment.
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A.2 THE LICENSED COPYRIGHTS ARE AS FOLLOWS:
COPYRIGHT ASSERTION
PEREGRINE(TM), Version 1.1
1a. Software Acronym:
PEREGRINE.
1b. Short Title:
3D All Particle Monte Carlo code to calculate radiation dose delivered
to cancer patients.
2. Authors Names and Affiliations:
▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇. ▇▇▇, ▇▇▇
▇. ▇▇▇▇, ▇▇▇ ▇. ▇▇▇▇▇▇, ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇. ▇▇▇▇▇▇, ▇▇▇ ▇.
House, ▇▇▇ ▇. ▇▇▇▇, ▇▇▇▇ ▇. ▇▇▇▇▇, ▇▇▇▇▇▇ ▇. May, ▇▇▇▇▇▇ ▇. Moses,
Clark, ▇. ▇▇▇▇▇▇, ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ Siantar,
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ von Wittenau, ▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇,
▇▇▇▇ ▇ ▇▇▇▇▇, (LLNL).
3. Software Completion Date: July 1999.
4. Brief Description:
PEREGRINE is a 3D All Particle Monte Carlo Code that calculates the
dose to cancer patients from a variety of clinical radiation sources.
PEREGRINE utilizes large nuclear, atomic, and electron databases, the
patient CT scan data, and the Monte Carlo method to accurately
calculate the dose delivered to a patient for photon teletherapy
sources. The results of the dose calculation are then written to a file
for graphical display over the CT scan data.
5. Method of Solution:
PEREGRINE uses conventional analog and condensed history Monte Carlo
radiation transport methods to calculate dose three-dimensional dose
distributions in the body. It reads input from standard treatment
planning exchange files.
6. Computer(s) for which software is written: UNIX workstation.
7. Operating System:
UNIX, Solaris.
8. Programming Language(s) Used:
Fortran (physical transport), C (I/O), Perl (scripting language used to
run PEREGRINE), Tcl/Tk (scripting and control).
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9. Software Limitations:
Must run on a UNIX workstation with >128MB RAM/CPU.
10. Unique Features of the Software:
PEREGRINE package includes a PEREGRINE Monte Carlo transport software,
LLNL generated atomic data.
11. Related and Auxiliary Software:
None.
12. Other Programming or Operating Information or Restrictions:
None.
13. Hardware Requirements:
UNIX workstation with >128MB RAM/CPU.
14. Time Requirements:
Time requirements vary substantially with the complexity of the problem
addressed.
TECHNICAL DESCRIPTION OF LICENSED COPYRIGHTS
The files are:
libpg - PEREGRINE Monte Carlo library source files:
alias_sampling.F
alias_sampling_choice.F
check.F
direction_cosines.F
dose_mesh_data.F
electron_data.F
electron_physics.F
elpo_distribution.h
energy_groups.F
energy_groups.h
epsilon.h file_io.F
form_factors.F
material_data.F
mesh_data.F
particle_attributes.h
particle_bank.F
particle_bank.h
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particle_intercepts.F
pg.F pg_instantiate_device.F
pg_transport.F photon_data.F
photort._physics.F
place_deposit.F
radial_function.F
random_numbers.F
random_numbers.h
source_data.F
source_electron_Physics.F
source_geometry.F
source_particle.F
source_photori.physics.F
source_rejection.F
source_transport.F
timer.F
track_particle.F
transform_coordinates.
F transform_coordinates.h
versim-pglib.h
libtpi - Treatment Planning Interface source files:
beam_geometry.c
ct_scan.c
dose.c
dose-array.c
f77_wrapper.c
inst_log_file.c
log_msg.c
runtime_diagnostics.c
scanner_data.c
structurex
tpi_Support.c
tpi_Support.h
version.h
libtsl - Teletherapy Source Library source files:
beam_device_compare.c
crc_checksurn.c
device_data.c
f77_wrapper.c
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fit_data.c
fit_data.h
instantiate_device.c
modify_one_device.c
pdt_data.c
runtime_options.c
transform._one_device.c
tsl_support.c
tsl-support.h
include - source files:
case_data.h
distributed_data.h
histo.h
material_data.h
pdt_data.h pg.h
pg_constants.h
pg_exec.h
pg_types.h
physics_constants.h
runtime_options.h
timer.h
tpi.h
tsl.h
tuning_parameters.h
Single-Threaded test executive and utilities source files
Master Slave executive source files
FUTURE COPYRIGHT RIGHTS:
------------------------
Licensable WFO Computer Software will be added by amendment.
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EXHIBIT B - RIGHTS GRANTED AND PERFORMANCE OBLIGATIONS
NOTICE
------
LICENSEE CONSIDERS INFORMATION IN THIS EXHIBIT B TO BE PROPRIETARY.
B.1 RIGHTS GRANTED
B.1.1 Rights to Licensed Patents
Subject to the limitations set forth in this Agreement, THE
REGENTS hereby grants to LICENSEE an exclusive,
nontransferable, royalty-bearing license to: a) make, have
made, use, sell, offer for sale, and import Licensed Products
in the Field of Use, and b) practice Licensed Methods in the
Field of Use.
B.1.2 Rights to Licensed Copyrights
Subject to the terms and conditions of this Agreement, THE
REGENTS grants to LICENSEE an exclusive, nontransferable,
royalty-bearing license to duplicate, display, perform, make
Derivative Works, distribute and have distributed, and sell
Licensed Products covered by Licensed Copyrights in the Field
of Use.
B.1.3 Rights to Licensed Trademarks
Subject to the terms and conditions of this Agreement, THE
REGENTS hereby grants LICENSEE an exclusive license to use
Licensed Trademarks, in corresponding Territories, as
specified in Exhibit E (LICENSED TRADEMARKS), on Licensed
Products or for Licensed Methods in the Field of Use.
B.1.4 "Field of Use" means planning human and animal cancer
therapies based on tumor irradiation with photons or electrons
that are generated either by a radiation
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source external to the patient (teletherapy) or by a radiation
source internal to the patient (brachytherapy).
B.2 SUBLICENSING RIGHTS
THE REGENTS also grants to LICENSEE the right to issue royalty-bearing
sublicenses to third parties in the Field of Use, having rights no
greater than those granted to LICENSEE, provided that LICENSEE has
exclusive rights in such Licensed Patents, Licensed Copyrights, and
Licensed Trademarks in the Field of Use at the time of sublicensing.
LICENSEE may issue sublicenses to Licensed Trademarks only in
conjunction with LICENSEE'S sublicensing of Licensed Patents and
Licensed Copyrights.
A Use Sublicense is considered to be a Licensed Product and not a
sublicense as contemplated in this B.2.
B.3 RIGHTS EXCLUDED
Rights that are not specifically granted in this Exhibit B or elsewhere
in this Agreement are specifically excluded from the license. In
particular, no license, express or implied, is granted to LICENSEE to
Licensed Trademarks outside the corresponding Territory as specified in
Exhibit E (LICENSED TRADEMARKS).
B.4. FUTURE RIGHTS
Licensable WFO Subject Inventions and Licensable WFO Computer Software
will be added to Exhibit A by amendment.
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B.5 PERFORMANCE OBLIGATIONS
B.5.1 LICENSEE will proceed diligently to develop, file relevant
regulatory applications for and attempt to obtain relevant
regulatory commercialization approvals with respect to the
manufacturing, marketing, and sale of Licensed Products for
all uses in the Field of Use. LICENSEE will file with the U.S.
Food and Drug Administration at least one 510k Application or
PMA (Pre-Market Approval) for clearance of Licensed Products
for at least teletherapy uses within one (1) year of the
Effective Date.
Notwithstanding any other term of this Agreement, for the
purposes of (a) invoking/ complying with the ▇▇▇▇▇-▇▇▇▇▇▇ Act
(35 U.S.C. ss.156) and any corresponding rules and regulations
of the U.S. Patent & Trademark Office regarding patent term
extension, and (b) seeking regulatory approval of LICENSEE'S
Licensed Products and Licensed Methods, LICENSEE shall act as
THE REGENTS' agent. To the extent deemed necessary by
LICENSEE, in good faith, the Parties will cooperate to secure
regulatory approval of LICENSEE'S Licensed Products and
Licensed Methods.
B.5.2 LICENSEE will release for distribution and offer Sales of
Licensed Products by the later date of either October 1, 2000,
or within sixty (60) days after the date of FDA clearance for
teletherapy uses of Licensed Products.
B.5.3 LICENSEE will have gross revenues from Sales of Licensed
Products or use of Licensed Methods of at least Three Million
Dollars ($3,000,000.00) per calendar year, as measured at the
dose of LICENSEE'S business on December 31 of the
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relevant calendar year, commencing with the later of calendar
year 2001, or the first full calendar year after a Licensed
Product has been released for distribution and offered for
sale in accordance with paragraph B.5.2.
B.5.4 LICENSEE will release for distribution and offer first OEM
sale of Licensed Products that interface with radiation
treatment planning systems that are manufactured and sold, or
otherwise distributed to third parties, by entities other than
LICENSEE by the later date of either October 1, 2001, or one
year after initial release for distribution and offer of Sales
of Licensed Products as defined in B.5.2. To the extent that
some commercial entities may prefer to sublicense Licensed
Patents and Licensed Copyrights rather than to purchase
Licensed Products on an OEM basis, LICENSEE'S sublicenses may
satisfy this OEM performance obligation.
B.5.5 LICENSEE will release for distribution and offer first sale of
Licensed Products in the Field of Use for brachytherapy by the
later date of either October 1, 2002, or within sixty (60)
days after the date of FDA clearance for brachytherapy uses of
Licensed Products.
B.5.6 LICENSEE will release for distribution and offer first sale of
Licensed Products in the Field of Use for inverse treatment
planning by the later date of either October 1, 2002, or
within sixty (60) days after the date of FDA clearance for
inverse treatment planning uses of Licensed Products.
B.5.7 LICENSEE will release for distribution and offer first sale of
Licensed Products in the Field of Use for electron
radiotherapy by the later date of either October 1,
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2002, or within sixty (60) days after the date of FDA
clearance for electron radiotherapy uses of Licensed Products.
B.5.8 The sales and other performance requirements specified above
may, by mutual written consent of LICENSEE and THE REGENTS, be
amended and/or extended at the written request of LICENSEE to
THE REGENTS, based upon legitimate business or technical
reasons specified in reasonable detail in such written
request. THE REGENTS will not unreasonably withhold its
consent to requests made in accordance with this paragraph.
B.5.9 The first progress report will be due on February 28, 2000.
B.6 OPTION RIGHT
THE REGENTS also grants to LICENSEE an option to negotiate terms under
which THE REGENTS will add protons, neutrons or both particles to the
Field of Use as otherwise defined in B.1.3 above (Option). The term of
the Option will be eighteen (18) months from the Effective Date.
LICENSEE may exercise this Option by providing THE REGENTS a written
plan (Plan) for the development and commercialization of Licensed
Products in the expanded Field of Use (Expanded FOU) which Plan is
acceptable to THE REGENTS. LICENSEE will provide the Plan as soon as
practical, but in no case later than fifteen (15) months after the
Effective Date. Upon exercise of the Option, and acceptance of the Plan
by THE REGENTS, THE REGENTS will negotiate in good faith terms for the
Expanded FOU. Terms will include, but not be limited by, specific
performance obligations of LICENSEE pertaining to regulatory
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approvals and sales of Licensed Products in the Expanded FOU and
additional fees, royalties, or other compensation for the rights
obtained by LICENSEE under the Option.
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EXHIBIT C - FEES AND ROYALTIES
NOTICE
------
LICENSEE CONSIDERS INFORMATION IN THIS EXHIBIT C TO BE PROPRIETARY.
C.1 LICENSE ISSUE FEE
C.1.1 As partial consideration for this Agreement, LICENSEE will pay
to THE REGENTS a nonrefundable issue fee of Three Hundred
Thousand Dollars ($300,000.00) (License Issue Fee) as follows:
C.1.1.1 Fifty Thousand Dollars ($50,000.00) to be paid when
LICENSEE executes the Agreement.
C.1.1.2 Fifty Thousand Dollars ($50,000.00) to be paid no
later than October 1, 1999.
C.1.1.3 Fifty Thousand Dollars ($50,000.00) to be paid no
later than November 1, 1999.
C.1.1.4 Fifty Thousand Dollars ($50,000.00) to be paid no
later than December 1, 1999.
C.1.1.5 Fifty Thousand Dollars ($50,000.00) to be paid no
later than January 1, 2000.
C.1.1.6 Fifty Thousand Dollars ($50,000.00) to be paid no
later than February 1, 2000.
C.1.2 THE REGENTS will execute the Agreement after receipt of
LICENSEE'S executed copies of the Agreement and payment of the
first installment of the License Issue Fee specified in
C.1.1.1 above.
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C.1.3 The License Issue Fee will not be credited against any other
royalty or fee due from LICENSEE to THE REGENTS.
C.1.4 In the event that LICENSEE grants sublicenses, LICENSEE will
collect an issue fee equal to or greater than the License
Issue Fee. LICENSEE will pay to THE REGENTS fifty percent
(50%) of any issue fee from sublicensing.
C.2 EARNED ROYALTIES
In addition to the License Issue Fee, LICENSEE will pay THE REGENTS an
earned royalty equal to eight percent (8%) of Net Sales by LICENSEE and
any sublicensees. The earned royalty on sales of any Licensed Product
that is sold as part of a larger product system, shall be based on the
average Net Sales of that Licensed Product sold separately on a non-OEM
basis over the relevant royalty reporting period. For the purposes of
calculating earned royalties, the minimum value of any License Product
shall be Fifty Thousand Dollars ($50,000.00) for the first two (2) full
years after the date of initial release for distribution and offer of
Sales of Licensed Products as specified in B.5.2. The minimum value
shall be Thirty-Five Thousand Dollars ($35,000.00) for the next two (2)
full years, and Twenty-Five Thousand Dollars ($25,000.00) thereafter.
In the event that LICENSEE terminates the WFO without cause and without
funding sufficient to complete the tasks and deliverables specified in
Phase 1 (Technology Transfer and Clinical Implementation) of Attachment
A to the WFO, the royalty rate specified above will be ten percent
(10%).
Payments of earned royalties will be in accordance with the
requirements of Article 4.2 (SUBLICENSING RIGHTS AND OBLIGATIONS),
Article 5 (FEES, ROYALTIES
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AND PAYMENTS) and Article 7 (PROGRESS AND ROYALTY REPORTS) of this
Agreement.
C.3 MAINTENANCE FEES
Beginning in calendar year 2000, LICENSEE will pay THE REGENTS a
license maintenance fee of Thirty Five Thousand Dollars ($35,000.00)
per calendar year, which will be due according to the schedule in CA.
The maintenance fee in any calendar year will be creditable against the
minimum annual royalty due in the same calendar year.
C.4 MINIMUM ANNUAL ROYALTIES
LICENSEE will pay to THE REGENTS a minimum annual royalty according to
the requirements of Article 5 (FEES, ROYALTIES AND PAYMENTS) and the
schedule below. Earned royalties paid to THE REGENTS for Net Sales
during a calendar year will be accrued and credited against the minimum
annual royalty paid for that same calendar year.
------------------------------------- ---------------------------------- -----------------------------------
Calendar Year Minimum Annual Royalty Due Date in Calendar Year
------------------------------------- ---------------------------------- -----------------------------------
2000 $35,000.00 February 28
------------------------------------- ---------------------------------- -----------------------------------
2001 $135,000.00 February 28
------------------------------------- ---------------------------------- -----------------------------------
2002 $200,000.00 February 28
------------------------------------- ---------------------------------- -----------------------------------
2003 $250,000.00 February 28
------------------------------------- ---------------------------------- -----------------------------------
2004 $325,000.00 February 28
------------------------------------- ---------------------------------- -----------------------------------
2005 and thereafter for the life of $400,000.00 February 28
this Agreement
------------------------------------- ---------------------------------- -----------------------------------
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EXHIBIT D - MUTUAL NONDISCLOSURE AGREEMENT
MUTUAL NONDISCLOSURE AGREEMENT FOR EXCHANGE OF INFORMATION
WITH ▇▇▇▇▇▇▇▇ LIVERMORE NATIONAL LABORATORY
This Agreement, effective on the date the last party signs, is made by
and between NOMOS CORPORATION located at ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇
▇▇▇▇▇ and THE REGENTS OF THE UNIVERSITY OF CALIFORNIA, located at ▇▇▇▇ ▇▇▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ("THE REGENTS"), under its Contract No. W-7405-ENG-48
with the U.S. DEPARTMENT OF ENERGY ("DOE"), as operators of the ▇▇▇▇▇▇▇▇
LIVERMORE NATIONAL LABORATORY, located at ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
("LLNL").
WHEREAS, THE REGENTS, as operators of LLNL, and NOMOS CORPORATION
(hereinafter individually referred to as the "PARTY" or collectively as the
"PARTIES") wish to exchange certain confidential and propriety information
relating to applications of Monte Carlo technologies for radiation therapy
("PROPRIETARY INFORMATION"), this Agreement will govern the conditions of mutual
disclosure of PROPRIETARY INFORMATION by the PARTIES.
The PARTIES hereby agree:
(1) To perform all terms of this Agreement and to maintain the
PROPRIETARY INFORMATION in confidence, giving it the same
degree of care, but no less than a reasonable degree of care,
as the receiving PARTY exercises with its own proprietary
information to prevent its unauthorized disclosure;
(2) To exchange and use the PROPRIETARY INFORMATION solely for the
purpose of evaluation, testing, and development of potential
collaborations, joint ventures, and/or license of the
technology;
(3) That neither PARTY, without the prior written consent of the
other, will disclose any portion of the PROPRIETARY
INFORMATION to others except to their employees, agents,
consultants, subcontractors or Government personnel having a
need to know in order to accomplish the sole purpose stated
above, and who are bound by a like obligation of
confidentiality under this Agreement;
(4) That neither PARTY will have any obligation, nor will the DOE,
assume any liability with respect to any portion of the
PROPRIETARY INFORMATION that:
(a) the receiving PARTIES can demonstrate by written
record was previously known to them;
(b) is, or becomes, available to the public through no
fault of the PARTIES;
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(c) is lawfully obtained by the PARTIES from a third
party and is not subject to an obligation of
confidentiality owed to the third party; or
(d) is independently developed by or for the PARTIES
Independent of any disclosure hereunder.
(5) That PROPRIETARY INFORMATION disclosed by the PARTIES Will be
in writing and clearly marked "PROPRIETARY INFORMATION" or its
equivalent. If such PROPRIETARY INFORMATION is initially
disclosed orally or by demonstration, it will be identified as
PROPRIETARY INFORMATION or us equivalent at the time of
disclosure. The disclosing PARTY will, within thirty (30) days
thereafter (a) reduce such PROPRIETARY INFORMATION to writing
or other tangible form, referencing the date and type of
PROPRIETARY INFORMATION disclosed, and ▇▇▇▇ it as PROPRIETARY
INFORMATION or its equivalent; and (b) deliver a copy to the
receiving PARTY. All protections and restrictions as to use
and disclosure will apply during such thirty (30) day period.
(6) That all rights and title to the PROPRIETARY INFORMATION
disclosed under this Agreement Will remain the property of
disclosing PARTY unless otherwise agreed to in writing by the
PARTIES.
(7) That PROPRIETARY INFORMATION provided by any disclosing PARTY
to any receiving PARTY shall be returned to the disclosing
PARTY within five (5) days of written request for such return
by the disclosing PARTY.
(8) That no copies shall be made by a receiving PARTY of any
PROPRIETARY INFORMATION without the express written consent of
the disclosing PARTY. Any copies so authorized shall be
returned to the disclosing PARTY or destroyed in accordance
with the term and demand provisions of this Agreement.
(9) That the receiving PARTY agrees that with regard to any
pattern application provided as PROPRIETARY INFORMATION under
this Agreement that no protest, public use proceeding, copied
claims for provoking interference, or other action impeding
Issuance of any patent based on the disclosed application
shall be filed by the receiving PARTY prior to issuance of
such patent.
(10) The PARTIES agree that any photocopy or facsimile copy of this
fully-executed agreement shall have the same legal force and
effect as any copy bearing original signatures of the PARTIES.
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TECHNICAL CONTACT FOR COMPANY: TECHNICAL CONTACT FOR LLNL:
Name: ▇▇▇▇▇▇ Otes Name: ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
Company: NOMOS Corporation Company: ▇▇▇▇▇▇▇▇ Livermore
Address: ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ National Laboratory
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ Address: ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇
Phone: (▇▇▇) ▇▇▇-▇▇▇▇ ▇.▇. ▇▇▇ ▇▇▇, ▇-▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Phone: (▇▇▇) ▇▇▇-▇▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
It is further agreed that the furnishing of PROPRIETARY INFORMATION does not
constitute any grant or license to the other PARTY for any legal rights now or
hereinafter held by either PARTY.
This Agreement will be subject to, and interpreted in accordance with, the laws
of the State of California.
Unless terminated earlier by thirty (30) days written notice by either PARTY to
the other, this Agreement will remain in effect for two (2) year(s) from the
effective date first written above, at which time the receiving PARTY will
return or destroy the PROPRIETARY INFORMATION within thirty (30) days of the
termination of this Agreement. If the PROPRIETARY INFORMATION is destroyed, a
certificate of destruction must be furnished to the disclosing PARTY within the
thirty (30) days. The secrecy and non-use obligations of the receiving PARTY set
forth above will remain in effect for five (5) years from the effective date.
The receiving PARTY acknowledges its obligations to control access to technical
data under the U.S. Export Laws and Regulations and agrees to adhere to such
Laws and Regulations with regard to any technical data received under this
Agreement.
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NOMOS CORPORATION ATTACHMENT 1 Radiation Treatment Planning
Amendment One
--------------------------------------------------------------------------------
Any modification to this Agreement must be in writing and signed by the duly
authorized representative of each PARTY.
NOMOS CORPORATION THE REGENTS OF THE UNIVERSITY OF CALIFORNIA,
▇▇▇▇▇▇▇▇ LIVERMORE NATIONAL LABORATORY
By: /s/ ▇▇▇▇ ▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇
------------------------------- -------------------------------------
Name: A. K. ▇▇▇▇▇▇▇ Name: for ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
----------------------------- -----------------------------------
Title: President & CEO Title: Director
---------------------------- -----------------------------------
Industrial Partnerships and
Commercialization
Date: 12/11/98 Date:12/8/98
--------------------------- ----------------------------------
RETURN TO: ▇▇▇▇▇▇▇▇ Livermore National Laboratory
ATTN: ▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇
▇.▇. ▇▇▇ ▇▇▇, ▇-▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
cc: ▇▇▇▇▇ Somercom, L-795
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NOMOS CORPORATION ATTACHMENT 1 Radiation Treatment Planning
Amendment One
--------------------------------------------------------------------------------
EXHIBIT E - LICENSED TRADEMARKS
----------------------------------------- ------------------------------------
LICENSED TRADEMARK TERRITORY
----------------------------------------- ------------------------------------
"PEREGRINE" United States of America
Europe
Canada
Japan
----------------------------------------- ------------------------------------
"PEREGRINE Dose Calculation Engine" United States of America
----------------------------------------- ------------------------------------
"PEREGRINE ▇▇ ▇▇▇▇▇ ▇▇▇▇▇" ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇ ▇▇▇▇▇▇▇
----------------------------------------- ------------------------------------
-56-
