AMENDMENT NO.5
SUPPLEMENTARY LICENSE FEE
This Amendment No. 5, dated July 19, 1997 is between University of Florida
Research Foundation, Inc., a not-for-profit corporation duly organized and
existing under the laws of the State of Florida and having its office in 000
Xxxxxxx Xxxx, Xxxxxxxxxxx, XX 00000-0000 ("UFRFI"), and Ixion Biotechnology,
Inc., a company duly organized under the laws of Florida, and having its
principle office at 00000 Xxxxxxxx Xxxxx, Xxxxxxx, Xxxxxxx 00000 ("Ixion")
WITNESSETH
WHEREAS, UFRFI and Ixion Biotechnology entered into an Incubator License
Agreement relating to licensed space at the Xxx Xxxxxx Biotechnology
Development Institute in Alachua, Florida, dated on June 26, 1995 (the "XXX"),
and
WHEREAS, UFRFI and Ixion amended the XXX in connection with the exercise
by Ixion of the option for the second renewal term ending July 31, 1998;
WHEREAS, Ixion Biotechnology desires a change in its payment of the
Supplementary License Fee;
WHEREAS, UFRFI and Ixion Biotechnology desire to amend the XXX in
connection with the exercise by Ixion Biotechnology of the option for the
second renewal term ending July 31,1998;
NOW, THEREFORE, in consideration of the premises and the mutual
covenants contained herein the parties agree as follows:
1. Ixion Biotechnology, Inc. and UFRFI agree to change from a Warrant
payment option to a Royalty option under Section 4 of the Incubator License
Agreement, effective August 1, 1997.
0.Xxxx payments shall commence on the first day of August, 1997. The
cash license fee for laboratories and office space during this term shall be
payable by Licensees in equal monthly installments, on or before the first day
of each month in addition to the fee paid under the terms of the second
renewal term and shall be as follows:
Lab Space and office, Rooms 168 & 168 A:
951 square feet
Lab Space and office, Rooms 170 & 170 A:
963 square feet
Entrepreneurial office 122:
160 square feet
Entrepreneurial office 126:
188 square feet
Entrepreneurial office 125:
139 square feet
Total square feet:
2,401 square feet at the rate of
$12.00/square foot
From August 1, 1997 to July 31, 1998, Ixion will pay a license fee of
$2,401 monthly (of which
$2,074 shall be paid in cash and $327.00 shall be deemed paid pursuant to
Attachment F).
IN WITNESS WHEREOF, the parties have hereunto set their hands and seals
and duly executed this agreement as of the day and the year first set forth
above.
University of Florida Research Foundation Ixion
Biotechnology, Inc.
Xxxxxx X. Xxxxxxxxx, Ph.X. Xxxxxx
X. Xxxxxx
Executive Director
Chairman & Chief Executive Officer
ATTACHMENT B
SUPPLEMENTARY LICENSE FEE
ROYALTY TERM SHEET
1. Agreement is to pay a 1.0% royalty on net sales as that term is
defined in the agreement regarding any product or process sold or licensed
that is based upon a technology or know-how whether patented or patentable or
not, which is developed, enhanced, or discovered during the term of the
Incubator License Agreement while Licensee is occupying Licensed Space in the
BDI building..
2. Such royalties shall continue until necessary to pay the
supplementary license fee which is $6.00 per square foot per year multiplied
by the footage of occupied space ($6.00 X 2,401 square feet = $14,406) plus an
annual rate of 12%, compounded on December 31 of the second renewal term of
the Incubator License Agreement, and annually thereafter on the unpaid
balance.
3. Licensee must make reasonable efforts to commercialize such
technology or know-how.
NOTE: Ixion also licenses an additional 139 square feet in exchange for
services, which is not subject to routine license fee or Supplementary License
Fee
OPTION D -- ROYALTIES
ATTACHMENT B
TO
INCUBATOR LICENSE AGREEMENT
AGREEMENT TO PAY ROYALTIES, dated as of July 21, 1997, among Ixion
Biotechnology, Inc., a Florida corporation ("Licensee") and the
University of Florida Research Foundation, Inc., a Florida not-for-
profit corporation in Gainesville, Florida ("UFRFI")
WHEREAS, Licensee has agreed to pay a supplementary license fee to UFRFI
pursuant to an Incubator License Agreement dated as of June 26, 1995; and
WHEREAS, Licensee has elected to pay such supplementary license fee upon
the terms and conditions hereinafter set forth.
NOW, THEREFORE, in consideration of the premises and the mutual
covenants contained herein the parties hereto agree as follows:
ARTICLE I - DEFINITIONS
For the purposes of this Agreement, the following words and phrases
shall have the meaning set forth in the Incubator License Agreement or the
following meanings:
1.1 "Licensee" shall mean the Licensee under the Incubator License
Agreement, and shall also include the following for the purposes of this
agreement to pay royalties:
(a) a related company of Licensee, the voting stock of which
is directly or indirectly at least fifty percent (50%) owned
or controlled by Licensee;
(b) an organization which directly or indirectly controls more
than fifty percent (50%) of the voting stock of Licensee;
(c) an organization, the majority ownership of which is
directly or indirectly common to the ownership of Licensee.
1.2 "Product Rights" shall mean all of the following Licensee
intellectual property:
(a) the technologies and know-how listed in Appendix A,
whether patented or patentable; or
(b) any development or enhancement of any item listed in
Appendix A or any new technology or know-how on which
research or development is accomplished in the Licensed
Space at the BDI during the term of the Incubator License
Agreement prior to termination thereof.
1.3 A "Royalty Product" shall mean any product or part thereof
which:
(a) makes use in whole or in part any intellectual property in
the Product Rights;
(b) is manufactured using a process which makes use in whole
or in part any intellectual property in the Product Rights ;
or
(c) is derived from Product Rights, know-how, and/or trade
secrets related to or described in Product Rights.
1.4 A "Royalty Process" shall mean:
(a) any process which makes use in whole or in part any
intellectual property covered in whole or in part in the
Product Rights; or
(b) is derived from Product Rights, know-how, and/or trade
secrets related to or described in Product Rights.
1.5 "Net Sales" shall mean Licensee's, and its sublicensees'
xxxxxxxx for Royalty Products and Royalty Processes and shall include
licensing and sublicensing fees less the sum of the following:
(a) discounts allowed in amounts customary in the trade,
(b) sales taxes, tariff duties, and/or use taxes which are
directly imposed and are with reference to particular sales;
(c) outbound transportation prepaid or allowed; and
(d) amounts allowed or credited on returns.
No deductions shall be made for commissions paid to individuals whether they
be with independent sales agencies or regularly employed by Licensee and on
its payroll, or for cost of collections. Royalty Products shall be considered
"sold" when billed out or invoiced.
1.6 "Know-How" shall mean any and all technical data, information,
or knowledge which relate to the Royalty Product, the Royalty Process or the
manufacture, marketing, registration, purity, quality, potency, safety, and
efficacy of the Royalty Product or Royalty Process.
1.7 "Royalty Cap" shall mean the amount of the supplementary license
fees as set forth in the Incubator License Agreement with interest at an
annual rate of twelve percent (12.0%), compounded on December 31 of the
initial year of this Agreement, and annually thereafter on the unpaid balance
thereof.
ARTICLE II - GRANT
2.1 Licensee hereby grants to UFRFI a royalty on the sale, use,
license, or lease of the Royalty Products, and the practice of Royalty
Processes until the royalty cap is reached.
2.2 The royalty granted hereunder shall not be construed to confer
any other rights upon UFRFI by implication, estoppel, or otherwise.
ARTICLE III - DUE DILIGENCE
3.1 Licensee shall use reasonable efforts to bring one or more
Royalty Products or Royalty Processes to market through a program for
exploitation of the Product Rights to attain reasonable commercialization of
Royalty Products and Royalty Processes.
ARTICLE IV - ROYALTIES
4.1 For the supplementary license fee referred to in the Incubator
License Agreement, Licensee shall pay to UFRFI a running royalty in an amount
equal to one percent (1.0 %) of the Net Sales of the Royalty Products or
Royalty Processes used, leased licensed, or sold by or for Licensee or its
sublicensees until the reaching of the Royalty Cap.
4.2 Royalty payments shall be paid in United States dollars in
Gainesville, Florida or at such other place as UFRFI may reasonably designate
consistent with the laws and regulations controlling in any foreign country.
If any currency conversion shall be required in connection with the payment of
royalties hereunder, such conversion shall be made by using the exchange rate
prevailing at the Chase Manhattan Bank (N.A.) on the last business day of the
calendar quarterly reporting period to which such royalty payments relate.
4.3 In the event the royalties set forth herein are higher than the
maximum royalties permitted by the law or regulations of a particular country,
the royalty payable for sales in such country shall be equal to the maximum
permitted royalty under such law or regulations. Notice of said event shall
be provided to UFRFI. An authorized representative of Licensee shall notify
UFRFI, in writing, within thirty (30) days of discovering that such royalties
are approaching or have reached the maximum amount, and shall provide UFRFI
with written documentation regarding the laws or regulations establishing such
maximum.
4.4 In the event that any taxes, withholding or otherwise, are
levied by any taxing authority in connection with accrual or payment of any
royalties payable by Licensee under this Agreement, and Licensee determines in
good faith that it must pay such taxes, Licensee shall have the right to pay
such taxes to the local tax authorities on behalf of UFRFI and payment of the
net amount due after reduction by the amount of such taxes, shall fully
satisfy Licensee's royalty obligations under this Agreement. Licensee shall
provide UFRFI with appropriate receipts or other documentation supporting such
payment. Licensee shall inform UFRFI in writing, within thirty (30) days of
notification that taxes will or have been levied by a taxing authority.
ARTICLE V - REPORTS AND RECORDS
5.1 Licensee shall keep full, true and accurate books of account
containing all particulars that may be necessary for the purpose of showing
the amounts payable to UFRFI hereunder. Said books of account shall be kept
at Licensee's principal place of business or the principal place of business
of the appropriate division of Licensee to which this Agreement relates. Said
books and the supporting data shall be open at all reasonable times for five
(5) years following the end of the calendar year to which they pertain, to the
inspection of UFRFI or its agents for the purpose of verifying Licensee's
royalty statement or compliance in other respects with this Agreement.
5.2 Licensee, within forty-five (45) days after December 31 of each
year, shall deliver to UFRFI true and accurate reports, giving such
particulars of the business conducted by Licensee and its sublicensees during
the preceding year under this Agreement as shall be pertinent to a royalty
accounting hereunder. These shall include at least the following;
(a) number of Royalty Products manufactured and sold.
(b) total xxxxxxxx for Royalty Products sold.
(c) accounting for all Royalty Processes used or sold.
(d) deductions applicable as provided in Paragraph 1.5.
(e) any licensing or sublicensing fees relating to the Royalty
Products or Royalty Processes.
(f) total royalty due.
5.3 With each such report submitted, Licensee shall pay to UFRFI the
royalties due and payable under this Agreement. If no royalties shall be due,
Licensee shall so report.
5.4 The royalty payments set forth in this Agreement shall, if
overdue, bear interest until payment at the monthly rate of one percent (1%).
The payment of such interest shall not foreclose UFRFI from exercising any
other rights it may have as a consequence of the lateness of any payment.
ARTICLE VI - PRODUCT LIABILITY
Licensee shall at all times during the term of this Agreement and
thereafter, indemnify, defend and hold UFRFI and the University of Florida,
their trustees, officers, employees and affiliates, harmless against all
claims and expenses, including legal expenses and reasonable attorneys' fees,
whether arising from a third party claim or resulting from UFRFI's enforcing
this indemnification clause against Licensee, or arising out of the death of
or injury to any person or persons or out of any damage to property and
against any other claim, proceeding, demand, expense and liability of any kind
whatsoever resulting from the production, manufacture, sale, use, lease,
consumption or advertisement of the Royalty Product(s) and/or Royalty
Process(es) or arising from any obligation of Licensee hereunder.
ARTICLE VII - ASSIGNMENT
This Agreement is not assignable and any attempt to do so shall be void.
ARTICLE VIII - TERMINATION
Upon termination of this Agreement for any reason, nothing herein shall
be construed to release either party from any obligation that matured prior to
the effective date of such termination.
ARTICLE IX- PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
Any payment, notice or other communication pursuant to this Agreement
shall be sufficiently made or given on the date of mailing if sent to such
party by certified first class mail, postage prepaid, addressed to it at its
address below or as it shall designate by written notice given to the other
party:
In the case of UFRFI:
President
University of Florida Research Foundation, Inc.
000 Xxxxxxx Xxxx
Xxxxxxxxxxx, Xxxxxxx 00000
With a copy to:
Director
Biotechnology Program
All payments to:
UFRFI
000 Xxxxxxx Xxxx
Xxxxxxxxxxx, Xxxxxxx 00000
PLEASE MAKE ALL CHECKS PAYABLE TO:
University of Florida Research Foundation, Inc.
In the case of Licensee:
Xxxxxx X. Xxxxxx, Chairman & CEO
Ixion Biotechnology, Inc.
00000 Xxxxxxxx Xxxxx
Xxxxxxx, XX 00000
ARTICLE X - MISCELLANEOUS PROVISIONS
10.1 This Agreement shall be construed, governed, interpreted and
applied in accordance with the laws of the State of Florida, .
10.2 The parties hereto acknowledge that this Agreement and the
Incubator License Agreement set forth the entire Agreement and understanding
of the parties hereto as to the subject matter hereof, and shall not be
subject to any change or modification except by the execution of a written
instrument subscribed to by the parties hereto.
10.3 The provisions of this Agreement are severable, and in the
event that any provisions of this Agreement shall be determined to be invalid
or unenforceable under any controlling body of the law, such invalidity or
unenforceability shall not in any way affect the validity or enforceability of
the remaining provisions hereof.
15.4 The failure of either party to assert a right hereunder or to
insist upon compliance with any term or condition of this Agreement shall not
constitute a waiver of that right or excuse a similar subsequent failure to
perform any such term or condition by the other party.
IN WITNESS WHEREOF, the parties have hereunto set their hands and seals
and duly executed this Agreement the day and year set forth below.
UNIVERSITY OF FLORIDA RESEARCH FOUNDATION, INC.
By _________________________________
Name _______________________________
Title ______________________________
Date _______________________________
Ixion Biotechnology, Inc.
By
Xxxxxx X. Xxxxxx
Chairman & CEO
Date _________________________________
APPENDIX A
TECHNOLOGY KNOW-HOW AND RESEARCH DEVELOPMENT
