EXHIBIT 10.11
PATENT AND TECHNOLOGY LICENSE AGREEMENT
This twenty-four (24) page AGREEMENT ("AGREEMENT") is made on this 18th
day of October, 2005, by and between THE BOARD OF REGENTS ("BOARD") of THE
UNIVERSITY OF TEXAS SYSTEM ("SYSTEM"), an agency of the State of Texas, whose
address is 000 Xxxx 0xx Xxxxxx, Xxxxxx, Xxxxx 00000, on behalf of THE UNIVERSITY
OF TEXAS M. D. XXXXXXXX CANCER CENTER ("UTMDACC"), a component institution of
SYSTEM, and BRIDGETECH HOLDINGS INTERNATIONAL, INC., a Delaware corporation
having a principal place of business located at 000 Xxxxx Xxxxxxx 000, Xxxxx
000, Xxxxxx Xxxxx, Xxxxxxxxxx 00000 ("LICENSEE").
TABLE OF CONTENTS
Page
RECITALS ............................................................................. 2
I. EFFECTIVE DATE................................................................. 2
II. DEFINITIONS.................................................................... 2
III. LICENSE........................................................................ 4
IV. CONSIDERATION, PAYMENTS AND REPORTS............................................ 5
V. SPONSORED RESEARCH............................................................. 10
VI. PATENTS AND INVENTIONS......................................................... 10
VII. INFRINGEMENT BY THIRD PARTIES.................................................. 11
VIII. PATENT MARKING................................................................. 12
IX. INDEMNIFICATION AND INSURANCE.................................................. 12
X. USE OF BOARD AND UTMDACC'S NAME................................................ 13
XI. CONFIDENTIAL INFORMATION AND PUBLICATION....................................... 14
XII. ASSIGNMENT..................................................................... 15
XIII. TERM AND TERMINATION........................................................... 15
XIV. WARRANTY; SUPERIOR-RIGHTS...................................................... 18
XV. GENERAL........................................................................ 19
SIGNATURES............................................................................ 23
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RECITALS
A. BOARD owns certain PATENT RIGHTS and TECHNOLOGY RIGHTS related to LICENSED
SUBJECT MATTER developed at UTMDACC.
B. BOARD, through UTMDACC, desires to have the LICENSED SUBJECT MATTER
developed in the LICENSED FIELD and used for the benefit of LICENSEE,
BOARD, SYSTEM; UTMDACC, the inventor(s), and the public as outlined in
BOARD's Intellectual Property Policy.
C. LICENSEE wishes to obtain a license from BOARD to practice LICENSED
SUBJECT MATTER.
NOW, THEREFORE, in consideration of the mutual covenants and promises
herein contained, the parties agree as follows:
I. EFFECTIVE DATE
1.1. This AGREEMENT is effective as of the date written above ("EFFECTIVE
DATE"), which is the date fully executed by all parties.
II. DEFINITIONS
As used in this AGREEMENT, the following terms have the meanings
indicated:
2.1. AFFILIATE means any business entity more than fifty percent (50%) owned by
LICENSEE, any business entity which owns more than fifty percent (50%) of
LICENSEE, or any business entity that is more than fifty percent (50%)
owned by a business entity that owns more than fifty percent (50%) of
LICENSEE.
2.2. LICENSED FIELD means the field of human diagnostics.
2.3. LICENSED PRODUCTS means any product or service sold by LICENSEE comprising
LICENSED SUBJECT MATTER pursuant to this AGREEMENT.
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2.4. LICENSED SUBJECT MATTER means inventions and discoveries covered by PATENT
RIGHTS or TECHNOLOGY RIGHTS within LICENSED FIELD.
2.5. LICENSED TERRITORY means worldwide.
2.6. NET SALES means the gross revenues received by LICENSEE and its
sublicensees from a SALE less sales discounts actually granted, sales
and/or use taxes actually paid, import and/or export duties actually paid,
outbound transportation actually prepaid or allowed, and amounts actually
allowed or credited due to returns (not exceeding the original billing or
invoice amount), all as recorded by LICENSEE in LICENSEE's official books
and records in accordance with generally accepted accounting practices and
consistent with LICENSEE's published financial statements and/or
regulatory filings with the United States Securities and Exchange
Commission.
2.7. PATENT RIGHTS means BOARD's rights in information or discoveries described
in invention disclosures, or claimed in any patents, and/or patent
applications, whether domestic or foreign, and all divisionals,
continuations, continuations-in-part, reissues, reexaminations or
extensions thereof, and any letters patent that issue thereon as defined
in Exhibit I attached hereto.
2.8. SALE OR SOLD means the transfer or disposition of a LICENSED PRODUCT for
value to a party other than LICENSEE or AFFILIATE.
2.9. TECHNOLOGY RIGHTS means BOARD's rights in any technical information,
know-how, processes, procedures, compositions, devices, methods, formulae,
protocols, techniques, software, designs, drawings or data created by the
inventor(s) listed in Exhibit I at UTMDACC before the EFFECTIVE DATE,
which are not claimed in PATENT RIGHTS but that are necessary for
practicing PATENT RIGHTS.
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III. LICENSE
3.1. BOARD, through UTMDACC, hereby grants to LICENSEE a royalty-bearing,
exclusive license under LICENSED SUBJECT MATTER to manufacture, have
manufactured, use, import, offer to sell and/or sell LICENSED PRODUCTS
within LICENSED TERRITORY for use within LICENSED FIELD. This grant is
subject to Sections 14.2 and 14.3 hereinbelow, the payment by LICENSEE to
UTMDACC of all consideration as provided herein, the timely payment of all
amounts due under any related sponsored research agreement between UTMDACC
and LICENSEE in effect during this AGREEMENT, and is further subject to
the following rights retained by BOARD and UTMDACC to:
(a) Publish the general scientific findings from research related to
LICENSED SUBJECT MATTER, subject to the terms of Article
XI--Confidential Information and Publication; and
(b) Use LICENSED SUBJECT MATTER for research, teaching, patient care,
and other educationally-related purposes.
3.2. LICENSEE may extend the license granted herein to any AFFILIATE provided
that the AFFILIATE consents in writing to be bound by this AGREEMENT to
the same extent as LICENSEE. LICENSEE agrees to deliver such contract to
UTMDACC within thirty (30) calendar days following execution thereof.
3.3. LICENSEE may grant sublicenses under LICENSED SUBJECT MATTER consistent
with the terms of this AGREEMENT provided that LICENSEE is responsible for
its sublicenses relevant to this AGREEMENT, and for diligently collecting
all amounts due LICENSEE from sublicensees. If a sublicense pursuant
hereto becomes bankrupt, insolvent or is placed in the hands of a receiver
or trustee, LICENSEE, to the extent
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allowed under applicable law and in a timely manner, agrees to use its
best reasonable efforts to collect all consideration owed to LICENSEE and
to have the sublicense agreement confirmed or rejected by a court of
proper jurisdiction.
3.4. LICENSEE must deliver to UTMDACC a true and correct copy of each
sublicense granted by LICENSEE, and any modification or termination
thereof, within thirty (30) calendar days after execution, modification,
or termination.
3.5. If this AGREEMENT is terminated pursuant to Article XIII-Term and
Termination, BOARD and UTMDACC agree to accept as successors to LICENSEE,
existing sublicensees in good standing at the date of termination provided
that each such sublicensee consents in writing to be bound by all of the
terms and conditions of this AGREEMENT.
IV. CONSIDERATION, PAYMENTS AND REPORTS
4.1. In consideration of rights granted by BOARD to LICENSEE under this
AGREEMENT, LICENSEE agrees to pay UTMDACC the following:
(a) All out-of-pocket expenses incurred by UTMDACC in filing,
prosecuting, enforcing and maintaining PATENT RIGHTS, and all such
future expenses incurred by UTMDACC, for so long as, and in such
countries as this AGREEMENT remains in effect. UTMDACC will invoice
LICENSEE within thirty (30) calendar days of the EFFECTIVE DATE for
expenses incurred as of that time and on a quarterly basis
thereafter. The invoiced amounts will be due and payable by LICENSEE
within thirty (30) calendar days of invoice; and
(b) A nonrefundable license documentation fee in the amount of
$50,000.00. This fee will not reduce the amount of any other payment
provided for in this ARTICLE IV, and is due and payable within
thirty (30) calendar days after the
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AGREEMENT has been fully executed by all parties and LICENSEE has
received an invoice for the amount from UTMDACC; and
(c) The following milestone fees, annual maintenance fees, and minimum
annual royalties:
Milestone Fees due and payable, regardless of whether LICENSEE or a
sublicensee achieves each milestone:
(i) $50,000.00 upon U.S. FDA approval (or other U.S. regulatory
approval) of a LICENSED PRODUCT for human diagnostic use; and
(ii) $70,000.00 upon regulatory approval of a LICENSED PRODUCT for
human diagnostic use in any country other than the United
States; and
Annual Maintenance Fees and Minimum Royalties due and payable as
follows:
(i) $50,000.00 for the first annual maintenance fee, due and
payable within thirty (30) calendar days of the first
anniversary of the EFFECTIVE DATE. This fee will not reduce
the amount of any other payment provided in this AGREEMENT;
and
(ii) $75,000.00 for the second annual maintenance fee, due and
payable within thirty (30) calendar days of the second
anniversary of the EFFECTIVE DATE. This fee will not reduce
the amount of any other payment provided in this AGREEMENT;
and
(iii) $90,000.00 for the third annual maintenance fee, due and
payable within thirty (30) calendar days of the third
anniversary of the EFFECTIVE DATE. This fee will not reduce
the amount of any other payment provided in this AGREEMENT;
and
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(iv) Minimum annual royalties of $100,000.00, due and payable
quarterly as provided in Section 4.2 beginning upon the first
SALE of a LICENSED PRODUCT; and
(d) A running royalty equal to five percent (5%) of NET SALES, due and
payable quarterly as provided in Section 4.2 by LICENSEE to UTMDACC,
regardless of whether LICENSEE or a sublicensee makes a SALE; and
(e) Thirty percent (30%) of all consideration, other than research and
development money and royalties for NET SALES, received by LICENSEE
from any sublicensee, including, but not limited to, up-front
payments, marketing, distribution, franchise, option, license, or
documentation fees, bonus and milestone payments and equity
securities.
(f) In case of the sale of all of LICENSEE's assets to a third xxxxx,
this AGREEMENT may be assigned in accordance with the provisions of
Section 12.1 subject to the payment to UTMDACC of $100,000.00
license documentation fee prior to the assignment. This fee shall be
in addition to and shall not replace the license documentation fee
above. In the event this AGREEMENT is assigned to a third party in
accordance with the provisions of Section 12.1 in connection with
any transaction other than sale of all of LICENSEE's assets to a
third party, thirty percent (30%) of all consideration received from
the transfer of rights under this AGREEMENT shall be payable to
UTMDACC (in consideration for UTMDACC allowing the assignment),
including but not limited to, royalties, up-front payments,
marketing, distribution, franchise, option, license, or
documentation fees, bonus and milestone payments and equity
securities.
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4.2. Unless otherwise provided, all such payments are payable within thirty
(30) calendar days after March 31, June 30, September 30, and December 31
of each year during the term of this AGREEMENT, at which time LICENSEE
will also deliver to UTMDACC a true and accurate report, giving such
particulars of the business conducted by LICENSEE and its sublicensees, if
any exist, during the preceding three calendar months under this AGREEMENT
as necessary for UTMDACC to account for LICENSEE's payments hereunder.
This report will include pertinent data, including, but not limited to:
(a) the accounting methodologies used to account for and calculate the
items included in the report and any differences in such accounting
methodologies used by LICENSEE since the previous report; and
(b) a list of LICENSED PRODUCTS produced for the three (3) preceding
calendar months categorized by the technology it relates to under
PATENT RIGHTS; and
(c) the total quantities of LICENSED PRODUCTS produced by the category
listed in Section 4.2(b); and
(d) the total SALES by the category listed in Section 4.2(b); and
(e) the calculation of NET SALES by the category listed in Section
4.2(b); and
(f) the royalties so computed and due UTMDACC by the category listed in
Section 4.2(b) and/or minimum royalties; and
(g) all consideration received from each sublicensee or assignee and
payments due UTMDACC; and
(h) all other amounts due UTMDACC herein.
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Simultaneously with the delivery of each such report, LICENSEE agrees to pay
UTMDACC the amount due, if any, for the period of such report. These reports are
required even if no payments are due.
4.3. During the term of this AGREEMENT and for one (1) year thereafter,
LICENSEE agrees to keep complete and accurate records of its and its
sublicensees' SALES and NET SALES in sufficient detail to enable the
royalties and other payments due hereunder to be determined. LICENSEE
agrees to permit UTMDACC or its representatives, at UTMDACC's expense, to
periodically examine LICENSEE's books, ledgers, and records during regular
business hours for the purpose of and to the extent necessary to verify
any report required under this AGREEMENT. If any amounts due UTMDACC are
determined to have been underpaid in an amount equal to or greater than
five percent (5%) of the total amount due during the period so examined,
then LICENSEE will pay the cost of the examination plus accrued interest
at the highest allowable rate.
4.4. Within thirty (30) calendar days following each anniversary of the
EFFECTIVE DATE, LICENSEE will deliver to UTMDACC, a written progress
report as to LICENSEE's (and any sublicensee's) efforts and
accomplishments during the preceding year in diligently commercializing
LICENSED SUBJECT MATTER in the LICENSED TERRITORY and LICENSEE's (and
sublicensees') commercialization plans for the upcoming year.
4.5. All amounts payable hereunder by LICENSEE will be paid in United States
funds without deductions for taxes, assessments, fees, or charges of any
kind. Checks are to be made payable to The University of Texas M. D.
Xxxxxxxx Cancer Center, and sent by United States mail to Box 297402,
Xxxxxxx, Xxxxx 00000, Attention: Manager, Sponsored Programs or by wire
transfer to:
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JPMorgan Chase Bank, N.A.
000 Xxxxxx
Xxxxxxx, Xxxxx 00000
SWIFT: XXXXXX00 (for international wires only)
ABA ROUTING NO: 000000000
ACCOUNT NAME: Univ. of Texas M. D. Xxxxxxxx Cancer Center
ACCOUNT NO.: 1586838979
REFERENCE: include title and EFFECTIVE DATE of AGREEMENT and type of payment
(e.g., license documentation fee, milestone payment, royalty [including
applicable patent application identified by MDA reference number and patent
number or application serial number], or maintenance fee, etc.).
4.6. No payments due or royalty rates owed under this AGREEMENT will be reduced
as the result of co-ownership of LICENSED SUBJECT MATTER by BOARD and
another party, including, but not limited to, LICENSEE.
V. SPONSORED RESEARCH
5.1. If LICENSEE desires to sponsor research for or related to the LICENSED
SUBJECT MATTER, and particularly where LICENSEE receives payments for
sponsored research pursuant to a sublicense under this AGREEMENT, LICENSEE
(a) will notify UTMDACC in writing of all opportunities to conduct this
sponsored research (including clinical trials, if applicable), (b) will
solicit research and/or clinical proposals from UTMDACC for this purpose,
and (c) will give good faith consideration to funding the proposals at
UTMDACC.
VI. PATENTS AND INVENTIONS
6.1. If after consultation with LICENSEE both parties agree that a new patent
application should be filed for LICENSED SUBJECT MATTER, UTMDACC will
prepare and file appropriate patent applications, and LICENSEE will pay
the cost of searching, preparing, filing, prosecuting and maintaining
same. If LICENSEE notifies UTMDACC that it does not intend to pay the cost
of an application, or if LICENSEE does not respond or make an
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effort to agree with UTMDACC on the disposition of rights of the subject
invention, then UTMDACC may file such application at its own expense and
LICENSEE's rights to such invention under this AGREEMENT shall terminate
in their entirety. UTMDACC will provide LICENSEE with a copy of the
application for which LICENSEE has paid the cost of filing, as well as
copies of any documents received or filed during prosecution thereof. The
parties agree that they share a common legal interest to get valid
enforceable patents and that LICENSEE will keep all privileged information
received pursuant to this Section confidential.
VII. INFRINGEMENT BY THIRD PARTIES
7.1. LICENSEE, at its expense, must enforce any patent exclusively licensed
hereunder against infringement in the LICENSED FIELD by third parties and
is entitled to retain recovery from such enforcement. After reimbursement
of LICENSEE's reasonable legal costs and expenses related to such
recovery, LICENSEE agrees to pay UTMDACC either: (a) the royalty detailed
in Section 4.1(d) for any monetary recovery that is for sales of LICENSED
PRODUCTS lost due to the infringement and related punitive damages; or (b)
fifty percent (50%) of reasonable royalties awarded and related punitive
damages in any recovery in which the award is for reasonable royalties.
LICENSEE must notify UTMDACC in writing of any potential infringement
within thirty (30) calendar days of knowledge thereof. If LICENSEE does
not file suit against a substantial infringer in the LICENSED FIELD within
six (6) months of knowledge thereof then BOARD or UTMDACC may, at its sole
discretion, enforce any patent licensed hereunder on behalf of itself and
LICENSEE, with UTMDACC retaining all recoveries from such enforcement,
and/or reduce the license granted hereunder to non-exclusive.
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7.2. In any suit or dispute involving an infringer, the parties agree to
cooperate fully with each other. At the request and expense of the party
bringing suit, the other party will permit access during regular business
hours, to all relevant personnel, records, papers, information, samples,
specimens, and the like in its possession.
VIII. PATENT MARKING
8.1. LICENSEE agrees that all packaging containing individual LICENSED
PRODUCT(S), documentation therefor, and when possible for actual LICENSED
PRODUCT(S) sold by LICENSEE, AFFILIATES, and/or sublicensees of LICENSEE
will be permanently and legibly marked with the number of any applicable
patent(s) licensed hereunder in accordance with each country's patent
laws, including Xxxxx 00, Xxxxxx Xxxxxx Code.
IX. INDEMNIFICATION AND INSURANCE
9.1. LICENSEE agrees to hold harmless and indemnify BOARD, SYSTEM, UTMDACC, its
Regents, officers, employees, students and agents from and against any
claims, demands, or causes of action whatsoever, costs of suit and
reasonable attorney's fees, including without limitation, those costs
arising on account of any injury or death of persons or damage to property
caused by, or arising out of, or resulting from, the exercise or practice
of the rights granted hereunder by LICENSEE, its officers, its AFFILIATES
or their officers, employees, agents or representatives.
9.2. In no event shall BOARD, SYSTEM or UTMDACC be liable for any indirect,
special, consequential or punitive damages (including, without limitation,
damages for loss of profits or expected savings or other economic losses,
or for injury to persons or property) arising out of, or in connection
with, this AGREEMENT or its subject matter, regardless of whether BOARD,
SYSTEM or UTMDACC knows or should how of the possibility of such damages.
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9.3. Beginning at the time when any LICENSED SUBJECT MATTER is being
distributed or sold (including for the purpose of obtaining regulatory
approvals) by LICENSEE or by a sublicensee, LICENSEE shall, at its sole
cost and expense, procure and maintain commercial general liability
insurance in amounts not less than $2,000,000 per incident and $2,000,000
annual aggregate, and LICENSEE shall use reasonable efforts to have the
BOARD, SYSTEM, UTMDACC, its Regents, officers, employees, students and
agents named as additional insureds. Such commercial general liability
insurance shall provide: (i) product liability coverage; (ii) broad form
contractual liability coverage for LICENSEE's indemnification under this
AGREEMENT; and (iii) coverage for litigation costs. The minimum amounts of
insurance coverage required herein shall not be construed to create a
limit of LICENSEE's liability with respect to its indemnification under
this AGREEMENT.
9.4. LICENSEE shall provide UTMDACC with written evidence of such insurance
within thirty (30) days of its procurement. Additionally, LICENSEE shall
provide UTMDACC with written notice of at least fifteen (15) days prior to
the cancellation, non-renewal or material change in such insurance.
9.5. LICENSEE shall maintain such commercial general liability insurance beyond
the expiration or termination of this AGREEMENT during: (i) the period
that any LICENSED SUBJECT MATTER developed pursuant to this AGREEMENT is
being commercially distributed or sold by LICENSEE or by a sublicensee or
agent of LICENSEE; and (ii) the five (5) year period immediately after
such period.
X. USE OF BOARD AND UTMDACC'S NAME
10.1. LICENSEE will not use the name of (or the name of any employee of)
UTMDACC, SYSTEM or BOARD in any advertising, promotional or sales
literature, on its Web site,
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or for the purpose of raising capital without the advance express written
consent of BOARD secured through:
The University of Texas
M. D. Xxxxxxxx Cancer Center
Legal Services, Xxxx 0000
X.X. Xxx 000000
Xxxxxxx, XX 00000-0000
ATTENTION: Xxxxxxx Xxxxxx
Email: xxxxxxx@xxxxxxxxxx.xxx
Notwithstanding the above, LICENSEE may use the name of (or name of
employee of) UTMDACC, SYSTEM or BOARD in routine business correspondence,
or as needed in appropriate regulatory submissions without express written
consent.
XI. CONFIDENTIAL INFORMATION AND PUBLICATION
11.1. UTMDACC and LICENSEE each agree that all information contained in
documents marked "confidential" and forwarded to one by the other (i) are
to be received in strict confidence, (ii) are to be used only for the
purposes of this AGREEMENT, and (iii) will not be disclosed by the
recipient party (except as required by law or court order), its agents or
employees without the prior written consent of the other party, except to
the extent that the recipient party can establish by competent written
proof that such information:
(a) was in the public domain at the time of disclosure; or
(b) later became part of the public domain through no act or omission of
the recipient party, its employees, agents, successors or assigns;
or
(c) was lawfully disclosed to the recipient party by a third party
having the right to disclose it; or
(d) was already known by the recipient party at the time of disclosure;
or
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(e) was independently developed by the recipient party without use of
the other party's confidential information; or
(f) is required by law or regulation to be disclosed.
11.2. Each party's obligation of confidence hereunder will be fulfilled by using
at least the same degree of care with the other party's confidential
information as it uses to protect its own confidential information, but
always at least a reasonable degree of care. This obligation will exist
while this AGREEMENT is in force and for a period of three (3) years
thereafter.
11.3. UTMDACC reserves the right to publish the general scientific findings from
research related to LICENSED SUBJECT MATTER, with due regard to the
protection of LICENSEE's confidential information. UTMDACC will submit the
manuscript of any proposed publication to LICENSEE at least thirty (30)
calendar days before publication, and LICENSEE shall have the right to
review and comment upon the publication in order to protect LICENSEE's
confidential information. Upon LICENSEE's request, publication may be
delayed up to sixty (60) additional calendar days to enable LICENSEE to
secure adequate intellectual property protection of LICENSEE'S
confidential information that would otherwise be affected by the
publication.
XII. ASSIGNMENT
12.1. Except in connection with the sale of all of LICENSEE'S assets to a third
party, this AGREEMENT may not be assigned by LICENSEE without the prior
written consent of UTMDACC, which will not be unreasonably withheld.
XIII. TERM AND TERMINATION
13.1. Subject to Sections 13.3, 13.4 hereinbelow, the term of this AGREEMENT is
from the EFFECTIVE DATE to the full end of the term or terms for which
PATENT RIGHTS
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have not expired, or if only TECHNOLOGY RIGHTS are licensed and no PATENT
RIGHTS are applicable, for a term of fifteen (15) years.
13.2. Any time after three (3) years from the EFFECTIVE DATE, BOARD or UTMDACC
have the right to terminate this license in any national political
jurisdiction within the LICENSED TERRITORY if LICENSEE, within ninety (90)
calendar days after receiving written notice from UTMDACC of the intended
termination, fails to provide written evidence satisfactory to UTMDACC
that LICENSEE or its sublicensee(s) has made a SALE of a LICENSED PRODUCT.
13.3. Subject to any rights herein which survive termination, this AGREEMENT
will earlier terminate in its entirety:
(a) automatically, if LICENSEE becomes bankrupt or insolvent and/or if
the business of LICENSEE shall be placed in the hands of a receiver,
assignee, or trustee, whether by voluntary act of LICENSEE or
otherwise; or
(b) upon thirty (30) calendar days written notice from UTMDACC, if
LICENSEE breaches or defaults on the payment or report obligations
of ARTICLE IV, or use of name obligations of ARTICLE X, unless,
before the end of the such thirty (30)-calendar day notice period,
LICENSEE has cured the default or breach to UTMDACC's satisfaction,
and so notifies UTMDACC, stating the manner of the cure; or
(c) upon ninety (90) calendar days written notice from UTMDACC if
LICENSEE breaches or defaults on any other obligation under this
AGREEMENT, unless, before the end of the such ninety (90)
calendar-day notice period, LICENSEE has
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cured the default or breach to UTMDACC's satisfaction and so
notifies UTMDACC, stating the manner of the cure; or
(d) at any time by mutual written agreement between LICENSEE and UTMDACC
upon one hundred eighty (180) calendar days written notice to all
parties and subject to any terms herein which survive termination;
or
(e) if Section 13.2 is invoked; or
(f) if LICENSEE has defaulted or been late on its payment obligations
pursuant to the terms of this AGREEMENT on any two (2) occasions in
a twelve (12) month period.
13.4. Upon termination of this AGREEMENT:
(a) nothing herein will be construed to release either party of any
obligation maturing prior to the effective date of the termination;
and
(b) LICENSEE covenants and agrees to be bound by the provisions of
Articles IX (Indemnification and Insurance), X (Use of Board and
UTMDACC's Name) and XI (Confidential Information and Publication) of
this AGREEMENT; and
(c) LICENSEE may, after the effective date of the termination, sell all
LICENSED PRODUCTS and parts therefor that it has on hand at the date
of termination, if LICENSEE pays the earned royalty thereon and any
other amounts due pursuant to Article IV of this AGREEMENT; and
(d) Subject to Section 13.4(c), LICENSEE agrees to cease and desist any
use and all SALE of the LICENSED SUBJECT MATTER and LICENSED
PRODUCTS upon termination of this AGREEMENT; and
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(e) LICENSEE grants to BOARD and UTMDACC a nonexclusive royalty bearing
license with the right to sublicense others with respect to
improvements made by LICENSEE (including improvements licensed by
LICENSEE from third parties) in the LICENSED SUBJECT MATTER.
LICENSEE and UTMDACC agree to negotiate in good faith the royalty
rate for the nonexclusive license. BOARD's and UTMDACC's right to
sublicense others hereunder is solely for the purpose of permitting
others to develop and commercialize the entire technology package.
XIV. WARRANTY; SUPERIOR-RIGHTS
14.1. Except for the rights, if any, of the Government of the United States of
America as set forth below, BOARD represents and warrants its belief that
(a) it is the owner of the entire right, title, and interest in and to
LICENSED SUBJECT MATTER, (b) it has the sole right to grant licenses
thereunder, and (c) it has not knowingly granted licenses thereunder to
any other entity that would restrict rights granted hereunder except as
stated herein.
14.2. LICENSEE understands that the LICENSED SUBJECT MATTER may have been
developed under a funding agreement with the Government of the United
States of America and, if so, that the Government may have certain rights
relative thereto. This AGREEMENT is explicitly made subject to the
Government's rights under any such agreement and any applicable law or
regulation, including P.L. 96-517 as amended by P.L. 98-620. To the extent
that there is a conflict between any such agreement, applicable law or
regulation and this AGREEMENT, the terms of such Government agreement,
applicable law or regulation shall prevail. LICENSEE agrees that LICENSED
PRODUCTS used or SOLD in the United States will be manufactured
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substantially in the United States, unless a written waiver is obtained in
advance from the GOVERNMENT.
14.3. LICENSEE understands and agrees that BOARD and UTMDACC, by this AGREEMENT,
make no representation as to the operability or fitness for any use,
safety, efficacy, approvability by regulatory authorities, time and cost
of development, patentability, and/or breadth of the LICENSED SUBJECT
MATTER BOARD and UTMDACC, by this AGREEMENT, also make no representation
as to whether any patent covered by PATENT RIGHTS is valid or as to
whether there are any patents now held, or which will be held, by others
or by BOARD or UTMDACC in the LICENSED FIELD, nor do BOARD and UTMDACC
make any representation that the inventions contained in PATENT RIGHTS do
not infringe any other patents now held or that will be held by others or
by BOARD.
14.4. LICENSEE by execution hereof, acknowledges, covenants and agrees that
LICENSEE has not been induced in any way by BOARD, SYSTEM, UTMDACC or
employees thereof to enter into this AGREEMENT, and further warrants and
represents that (a) LICENSEE has conducted sufficient due diligence with
respect to all items and issues pertaining to this AGREEMENT; and (b)
LICENSEE has adequate knowledge and expertise, or has used knowledgeable
and expert consultants, to adequately conduct such due diligence, and
agrees to accept all risks inherent herein.
XV. GENERAL
15.1. This AGREEMENT constitutes the entire and only agreement between the
parties for LICENSED SUBJECT MATTER and all other prior negotiations,
representations, agreements and understandings are superseded hereby. No
agreements altering or
19
supplementing the terms hereof will be made except by a written document
signed by both parties.
15.2. Any notice required by this AGREEMENT must be given by prepaid, first
class, certified mail, return receipt requested, and addressed in the case
of UTMDACC to:
The University of Texas M. D. Xxxxxxxx Cancer Center
Office of Technology Commercialization
0000 X. Xxxx, Xxxxx 000, Xxxx 0000
Xxxxxxx, Xxxxx 00000
ATTENTION: Xxxxxxxxxxx X. Xxxxxxx, M.D.
Vice President, Technology Transfer
with copy to BOARD:
BOARD OF REGENTS
The University of Texas System
000 Xxxx Xxxxxxx Xxxxxx
Xxxxxx, Xxxxx 00000
ATTENTION: Office of General Counsel
or in the case of LICENSEE to:
Bridgetech Holdings International, Inc.
000 Xxxxx Xxxxxxx 000, Xxxxx 000
Xxxxxx Xxxxx, XX 00000
ATTENTION: Xxxxxx Xxxx
or other addresses as may be given from time to time under the terms of
this notice provision.
15.3. LICENSEE must comply with all applicable federal, state and local laws and
regulations in connection with its activities pursuant to this AGREEMENT.
15.4. This AGREEMENT will be construed and enforced in accordance with the laws
of the United States of America and of the State of Texas, without regard
to its conflict of law provisions. Xxx Xxxxx Xxxxx Xxxxxx xx Xxxxxx
Xxxxxx, Xxxxx (or, if there is exclusive federal jurisdiction, the United
States District Court for the Southern District of Texas)
20
shall have exclusive jurisdiction and venue over any dispute arising out
of this AGREEMENT, and LICENSEE consents to the jurisdiction of such
courts; however, nothing herein shall be deemed as a waiver by BOARD,
SYSTEM or UTMDACC of its sovereign immunity.
15.5. Any dispute or controversy arising out of or relating to this AGREEMENT,
its construction or its actual or alleged breach will be decided by
mediation. If the mediation does not result in a resolution of such
dispute or controversy, it will be finally decided by an appropriate
method of alternate dispute resolution, including without limitation,
arbitration, conducted in the city of Houston, Xxxxxx County, Texas, in
accordance with the applicable, then-current procedures of the American
Arbitration Association. The arbitration panel will include members
knowledgeable in the evaluation of the LICENSED SUBJECT MATTER. Judgment
upon the award rendered may be entered in the highest court or forum
having jurisdiction, state or federal. The provisions of this Section 15.5
will not apply to decisions on the validity of patent claims or to any
dispute or controversy as to which any treaty or law prohibits such
arbitration. The decision of the arbitration must be sanctioned by a court
of law having jurisdiction to be binding upon and enforceable by the
parties.
15.6. Failure of BOARD or UTMDACC to enforce a right under this AGREEMENT will
not act as a waiver of right or the ability to later assert that right
relative to the particular situation involved.
15.7. Headings included herein are for convenience only and will not be used to
construe this AGREEMENT.
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15.8. If any part of this AGREEMENT is for any reason found to be unenforceable,
all other parts nevertheless will remain enforceable.
22
IN WITNESS WHEREOF, the parties hereto have caused their duly authorized
representatives to execute this AGREEMENT.
BOARD OF REGENTS OF THE BRIDGETECH HOLDINGS
UNIVERSITY OF TEXAS SYSTEM INTERNATIONAL, INC.
By /s/ Xxxx Xxxxxxxxxx, M.D. By /s/ Xxxxxx X. Xxxx III
--------------------------------- --------------------------------
Xxxx Xxxxxxxxxx, M.D. Name: Xxxxxx X. Xxxx III
President Title: EVP & CFO
The University of Texas
M.D. Xxxxxxxx Cancer Center
Date: 10/10/05 Date: 9/29/05
THE UNIVERSITY OF TEXAS
M.D. XXXXXXXX CANCER CENTER
By /s/ Xxxx Xxxxx
---------------------------------
Xxxx Xxxxx
Executive Vice President
The University of Texas
M.D. Xxxxxxxx Cancer Center
Date: 10/17/05
Approved as to Content:
By /s/ Xxxxxxxxxxx X. Xxxxxxx, M.D.
-----------------------------------------
Xxxxxxxxxxx X. Xxxxxxx, M.D.
Vice President, Technology Transfer
M.D. Xxxxxxxx Cancer Center
Date: 10-6-05
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EXHIBIT I
MDA97-041 Synthetic Peptides from Human Papilloma virus (HPV) as Markers of
Protective Immunity and as Reagents for Immunotherapy and Prophylaxis of
HPV-Associated Cervical Cancer. Inventors: Xxxxxxxxxx X. Xxxxxx, Ph.D.,
Xxxxxxxxx Xxxxxxxxx-Xxxx, M.D., Ph.D., Xxxxxxx X. Xxxxxxxx, M.D.
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