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EXHIBIT 10.5
*** Text Omitted and Filed Separately
Confidential Treatment Requested
Under 17 C.F.R. Sections 200.80 (b) (4),
200.83 and 240.24b-2
LICENSE AGREEMENT
PREAMBLE
This Agreement is made and entered into to be effective the 9th day of
May, 1995, (the Effective Date) by and between the UNIVERSITY OF SOUTH FLORIDA
RESEARCH FOUNDATION, INC., a corporation not for profit under Chapter 617
Florida Statutes, and a direct-support organization of the University of South
Florida (hereinafter referred to as "USF") pursuant to section 240.299 Florida
Statutes, having its principal office at 4202 East Fowler Avenue, FAO 126,
Tampa, Florida 33620, U.S.A. (hereinafter referred to as "RESEARCH FOUNDATION")
and GENETRONICS, INC., a corporation duly organized under the laws of California
and authorized to do business in the State of Florida, and GENETRONICS
BIOMEDICAL, LTD., a corporation duly organized under the laws of British
Columbia, both having its principal office at 11199 Sorrento Valley Road, San
Diego, California 92121 (both Genetronics, Inc. and Genetronics Biomedical, Ltd.
hereinafter referred to as "LICENSEE").
WITNESSETH
WHEREAS, the University of South Florida ("USF") and LICENSEE jointly
developed certain needle electrodes for electroporation-mediated delivery of
drugs and genes that are the subject of "Patent Rights" (as later defined
herein); and
WHEREAS, USF and LICENSEE have agreed to joint ownership of the Patent
Rights and have agreed to share in commercial benefits that may derive
therefrom; and
WHEREAS, RESEARCH FOUNDATION is the exclusive licensee of USF's
interests in such Patent Rights and has the right to grant licenses thereunder;
and
WHEREAS, RESEARCH FOUNDATION desires to have the Patent Rights utilized
in the public interest and is willing to grant a license to LICENSEE thereunder;
and
WHEREAS, LICENSEE intends to develop, produce, manufacture, market
and/or sell products similar to the "Licensed Product(s)" (as later defined
herein) and is willing to commit itself to a diligent program of exploiting the
Patent Rights so that public utilization shall result therefrom; and
WHEREAS, LICENSEE desires to obtain a license under the Patent Rights
upon the terms and conditions hereinafter set forth.
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NOW THEREFORE, in consideration of the premises and mutual covenants
herein contained, the receipt and sufficiency of which is acknowledged and
intending to be bound, the parties agree as follows:
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ARTICLE 1. DEFINITIONS
For the purposes of this Agreement, the following words and phrases
shall have the following meanings:
1.1. "LICENSEE" shall include: a related company of LICENSEE, the voting
stock of which is, directly or indirectly, at least fifty percent (50%)
owned or controlled by LICENSEE; an organization which directly or
indirectly controls more than fifty percent (50%) of the voting stock of
LICENSEE; and an organization, the majority ownership of which is,
directly or indirectly, common to the ownership of LICENSEE.
1.2 "Patent Rights" shall mean:
(i) U.S. Patent Number 5,702,359 and corresponding foreign patents and
applications, regardless of inventorship,
(ii) US Patent Number 5,993,434 and corresponding foreign patents and
applications, regardless of inventorship, and
(iii) any patent application and U.S. patent claiming priority from the
patent application that matured into the 5,702,359 or the 5,993,434
patent, and corresponding foreign patents and applications, provided,
with respect to only this part (iii), that at least one USF employee and
at least one LICENSEE employee made an inventive contribution to at
least one claim in any such patent or patent application.
1.3 A "Licensed Process" shall mean any process which, except for the
license granted herein, would infringe an issued, unexpired claim
contained in the Patent Rights in the country in which such process is
performed and, in the event a process is performed in a country for
which Patent Rights are not sought, such process shall be a Licensed
Process to the extent use of the process would infringe an issued,
unexpired claim contained in the Patent Rights in the United States if
such Patent Rights were issued in that country.
1.4 A "Licensed Product" shall mean any product which:
(a) except for the license granted in this Agreement, would infringe
an issued, unexpired claim contained in the Patent Rights in the
country in which such product is made, used, leased or sold,
(b) is made by a process that, except for the license granted herein,
would infringe a Licensed Process in the country in which such
product is made, used or sold, or
(c) in the event a product is made, used, leased or sold in a country
in which Patent Rights are not sought, such product shall be a
Licensed Product to the extent its manufacture, use, lease, or
sale would infringe an issued, unexpired claim contained in the
Patent Rights in the United States if such Patent Rights were
issued in that country.
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1.5 "Net Sales" shall mean LICENSEE's and its sublicensees' billings for
Licensed Products sold or leased hereunder less the sum of the
following: [...***...]
No deductions shall be made for [...***...]. Licensed Products shall be
considered "sold" or "leased" when payment is received, but in no event
shall be longer than [...***...] after such Licensed Product is used,
billed out or invoiced, as applicable. If the Licensed Product is used
by, sold or leased to a related person or is leased or exchanged for a
consideration other than money, billings shall be the [...***...] price
of comparable Licensed Products sold in arm's length transactions by
LICENSEE or, if no sales or leases of comparable Licensed Products have
been made, then the fair market value thereof.
1.6 "Effective Date" shall mean the date so identified above in the preamble
to this Agreement .
ARTICLE 2. GRANT
2.1. RESEARCH FOUNDATION hereby grants to LICENSEE the exclusive worldwide
right and license to make, have made, use, sublicense, lease, offer for
sale, import and sell the Licensed Products, and to practice and to
sublicense the Licensed Processes to the end of the term for which the
Patent Rights are granted unless sooner terminated according to the
terms hereof.
2.2 RESEARCH FOUNDATION reserves to the USF the right to practice under the
Patent Rights for the USF's noncommercial research and education
purposes. RESEARCH FOUNDATION and USF recognize that LICENSEE is a
commercial entity and the exclusivity granted it under Section 2.1 is a
valuable commercial right, for which RESEARCH FOUNDATION is and shall be
compensated pursuant to Section 4.1. LICENSEE recognizes that USF may
use the Patent Rights in performance of research that is funding by
commercial organizations. RESEARCH FOUNDATION and USF agree to use
reasonable efforts to ensure that research performed for a commercial
organization shall be of the type and within a scope that would not
reasonably be expected to minimize the value of the exclusive license
granted LICENSEE. Notwithstanding the foregoing, under no circumstances
is RESEARCH FOUNDATION or USF permitted to use the Patent Rights for any
commercial purpose, which shall include performing research for a
commercial entity, other than LICENSEE, in which the RESEARCH FOUNDATION
or USF has an economic or equity interest.
2.3 The license granted hereunder shall not be construed to confer any
rights upon LICENSEE by implication, estoppel or otherwise as to any
technology, except as specifically set forth herein.
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2.4 LICENSEE agrees that any sublicenses granted by it shall contain such
provisions as are necessary for LICENSEE to meet its obligations under
this Agreement and to reasonably protect the interests of RESEARCH
FOUNDATION with regard to such sublicense.
2.5 LICENSEE agrees to forward to RESEARCH FOUNDATION under confidence a
copy of any and all fully executed sublicense agreements for Licensed
Products or Licensed Processes and further agrees to forward to RESEARCH
FOUNDATION under confidence annually a copy of such reports received by
LICENSEE from its sublicensees during the preceding twelve (12) month
period under the sublicenses as shall be pertinent to a royalty
accounting under said sublicense agreements. RESEARCH FOUNDATION shall
have the right to disclose to its employees and agents any such
sublicense agreements and royalty report provided to it under confidence
to the extent such employees and agents require the information to
effectuate RESEARCH FOUNDATION's rights under this Agreement.
2.6 LICENSEE shall not receive from sublicensees anything of value in lieu
of cash payments of royalties for any sublicense under this Agreement,
without the express prior written permission of RESEARCH FOUNDATION.
2.7 Termination under any of the provisions of this Agreement of the license
granted to LICENSEE in this Agreement shall terminate all exclusive
sublicenses which may have been granted by LICENSEE, provided that any
sublicensee may elect to continue its sublicense by advising RESEARCH
FOUNDATION in writing, within sixty (60) days of the sublicensee's
receipt of written notice of such termination, of its election and of
its agreement to assume in respect to RESEARCH FOUNDATION one-half (1/2)
of all the obligations (including obligations for payment) contained in
its sublicensing agreement with LICENSEE. Any sublicense granted by
LICENSEE shall contain provisions corresponding to those of this
paragraph respecting termination and the conditions of continuance of
sublicenses.
ARTICLE 3. DUE DILIGENCE
3.1. LICENSEE shall use reasonable efforts to bring one or more Licensed
Products or Licensed Processes to market through a diligent program for
exploitation of the Patent Rights, and LICENSEE's failure to so perform
shall be grounds for RESEARCH FOUNDATION to terminate this Agreement
pursuant to Paragraph 13.3 hereof. RESEARCH FOUNDATION acknowledges
LICENSEE has a [...***...] to develop electroporation-mediated delivery
of drugs in the oncology field, and further acknowledges that
[...***...] satisfy the diligence duties set forth in this Section 3.1.
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ARTICLE 4. ROYALTIES
4.1. For the rights, privileges and license granted hereunder, LICENSEE shall
pay fees and royalties to RESEARCH FOUNDATION in the manner hereinafter
provided from the date of issuance to the end of the term of the Patent
Rights or until this Agreement shall be terminated as hereinafter
provided:
(a) Running Royalties equal to [...***...] percent [...***...] of Net
Sales of the Licensed Products leased or sold by or for LICENSEE
itself.
(b) A royalty percentage based on Net Sales of the Licensed Products
leased or sold by or for a sublicensee, wherein the royalty is
the higher of: (i) [...***...]% or (ii) the product of (the
royalty to be paid to LICENSEE by sublicensee) X [...***...], but
in no event higher than a [...***...]% royalty.
(c) Subject to regulatory approval, LICENSEE shall grant RESEARCH
FOUNDATION and its designees warrants to purchase, in total,
600,000 shares of common stock in Genetronics Biomedical, Ltd.,
pursuant to the terms and conditions of the Warrants to Purchase
Common Stock agreement finally signed on or after the date this
Agreement is signed. RESEARCH FOUNDATION designates that the
warrants be granted in the amounts and to the parties as
indicated:
University of South Florida Research Foundation, Inc. 330,000
shares
Richard Heller 90,000 shares
Mark Jaroszeski 90,000 shares
Richard Gilbert 90,000 shares
(d) Subject to regulatory approval, LICENSEE shall issue RESEARCH
FOUNDATION and its designees, in total, 150,000 unregistered
shares of common stock in Genetronics Biomedical, Ltd. RESEARCH
FOUNDATION designates that the unregistered shares of common
stock be issued in the amounts and to the parties as indicated:
University of South Florida Research Foundation, Inc. 82,500
shares
Richard Heller 22,500 shares
Mark Jaroszeski 22,500 shares
Richard Gilbert 22,500 shares
4.2. Royalty payments shall be paid in United States dollars in Tampa,
Florida, or at such other place as RESEARCH FOUNDATION 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.
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ARTICLE 5. 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 RESEARCH FOUNDATION hereunder, and said books and the
supporting data shall be open at all reasonable times and upon
reasonable notice for [...***...] years following the end of the
calendar year to which they pertain, to the inspection of RESEARCH
FOUNDATION or its agents for the purpose of verifying LICENSEE's royalty
statement or compliance in other respects with this Agreement. The cost
of any such verification shall be borne by RESEARCH FOUNDATION, subject
to the proviso that in the event any such inspection discloses an
underpayment by more than [...***...]% of the amount due under this
Agreement LICENSEE shall reimburse RESEARCH FOUNDATION for its
reasonable expenses directly associated with the inspection.
5.2. LICENSEE, within sixty (60) days after March 31, June 30, September 30
and December 31, of each year, shall deliver to RESEARCH FOUNDATION true
and accurate reports, giving such particulars of the business conducted
by LICENSEE and its sublicensees during the preceding three-month period
under this Agreement as shall be pertinent to a royalty accounting
hereunder, including an accounting for Licensed Processes used and
Licensed Products leased and sold and the billings, deductions and
royalties due with respect thereto. LICENSEE's first such report
delivered hereunder shall include an accounting, and the billings,
deductions and royalties due from the date of issuance of the Patent
Rights.
5.3. With each such report submitted, LICENSEE shall pay to RESEARCH
FOUNDATION 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 a [...***...] percent ([...***...]%) per annum
rate. The payment of such interest shall not foreclose RESEARCH
FOUNDATION from exercising any other rights it may have as a consequence
of the lateness of the payment.
ARTICLE 6. PATENT PROSECUTION
6.1 LICENSEE shall be responsible for prosecution and maintenance of the
Patent Rights during the term of this Agreement.
6.2 The inventorship of a patent application or patent within Patent Rights
that is filed after the Effective Date shall be determined by the
procedure set forth in Exhibit I.
ARTICLE 7. INFRINGEMENT
7.1. The parties shall inform each other promptly, in writing, of any alleged
infringement of the Patent Rights by a third party, and of any available
evidence thereof.
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7.2. During the term of this Agreement, LICENSEE shall have the right,
subject only to approval not unreasonably withheld of RESEARCH
FOUNDATION, but shall not be obligated, to prosecute at its own expense
any such infringements of the Patent Rights and, in furtherance of such
right, RESEARCH FOUNDATION hereby agrees that LICENSEE may join RESEARCH
FOUNDATION as a party plaintiff in any such suit, without expense to
RESEARCH FOUNDATION. The total cost of any such infringement action
commenced or defended solely by LICENSEE shall be borne by LICENSEE and
any recovery realized from such infringement action, after reimbursing
LICENSEE for its costs and expenses in prosecuting the infringement,
shall be treated as if it were a royalty received by LICENSEE from a
sublicensee for Net Sales of Licensed Product and the provisions of
Section 4.1(b) shall apply.
7.3. If within [...***...] months after notifying an alleged infringer of any
alleged infringement, LICENSEE shall have been unsuccessful in
persuading the alleged infringer to desist and shall not have brought
and shall not be diligently prosecuting an infringement action, or if
LICENSEE shall notify RESEARCH FOUNDATION at any time prior thereto of
its intention not to bring suit against any alleged infringer, then, and
in those events only, RESEARCH FOUNDATION shall have the right, but
shall not be obligated, to prosecute at its own expense any infringement
of the Patent Rights, and RESEARCH FOUNDATION may, for such purposes,
use the name of LICENSEE as party plaintiff. No settlement, consent
judgment or other voluntary final disposition of the suit may be entered
into without the consent of the other party, which consent shall not
unreasonably be withheld.
7.4. In the event that a declaratory judgment action alleging invalidity or
noninfringement of any of the Patent Rights shall be brought against
RESEARCH FOUNDATION, LICENSEE at its option, shall have the right within
[...***...] after commencement of such action, to intervene and take
over the sole defense of the action at its own expense.
7.5. In any infringement suit as either party may institute to enforce the
Patent Rights pursuant to this Agreement, the other party hereto shall,
at the request and expense of the party initiating such suit, cooperate
in all respects and, to the extent possible, have its employees testify
when requested and make available relevant records, papers, information,
samples, specimens, and the like.
7.6. RESEARCH FOUNDATION warrants and represents that it has the lawful right
to grant the license provided in this Agreement and that it has not
granted rights or licenses in derogation of this Agreement. RESEARCH
FOUNDATION agrees that during the term of this Agreement, or any license
granted hereunder, RESEARCH FOUNDATION shall not enter into any other
agreements that conflict with the rights or obligations provided
hereunder, including any rights and obligations that survive termination
of this Agreement.
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ARTICLE 8. PRODUCT LIABILITY
8.1. LICENSEE shall, at all times during the term of this Agreement and
thereafter, indemnify, defend and hold RESEARCH FOUNDATION, USF and
their trustees, officers, employees and affiliates, harmless against all
claims and expenses, including legal expenses and reasonable attorneys'
fees, arising out of the death of or injury to any person or persons or
out of any damage to tangible property and against any other claim,
proceeding, demand, expense and liability of any kind whatsoever,
resulting from the LICENSEE's, LICENSEE's affiliated companies, or any
of its sublicensee's production, manufacture, sale, use (both
experimental and consumer), lease, consumption or advertisement of the
Licensed Product(s) and/or Licensed Process(es).
8.2. EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, RESEARCH
FOUNDATION MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY
KIND, EITHER EXPRESSED OR IMPLIED, INCLUDING, BUT NOT LIMITED TO,
WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, AND
VALIDITY OF PATENT RIGHTS CLAIMS, ISSUED OR PENDING.
ARTICLE 9. EXPORT CONTROLS
It is understood that RESEARCH FOUNDATION is subject to United States
laws and regulations controlling the export of technical data, computer
software, laboratory prototypes and other commodities (including the Arms Export
Control Act, as amended and the Export Administration Act of 1979), and that its
obligations hereunder are contingent on compliance with applicable United States
export laws and regulations. The transfer of certain technical data and
commodities may require a license from the cognizant agency of the United States
Government and/or written assurances by LICENSEE that LICENSEE shall not export
data or commodities to certain foreign countries without prior approval of such
agency. RESEARCH FOUNDATION neither represents that a license shall not be
required nor that, if required, it shall be issued.
ARTICLE 10. NON-USE OF NAMES
LICENSEE shall not use the names of RESEARCH FOUNDATION, the University
of South Florida nor of any of its employees, nor any adaptation thereof, in any
advertising, promotional or sales literature without prior written consent
obtained from RESEARCH FOUNDATION in each case, except that LICENSEE may state
that it is licensed by RESEARCH FOUNDATION under one or more of the patents
and/or applications comprising the Patent Rights and may make disclosures as
required by law or SEC regulations or such.
ARTICLE 11. ASSIGNMENT
This Agreement is not assignable except that (i) LICENSEE may assign
this Agreement in connection with any merger, consolidation, sale of all or
substantially all of its assets or those assets directly associated to this
license, or equity, or sale of a controlling interest in LICENSEE,
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and (ii) LICENSEE may assign this Agreement to another entity in which LICENSEE
maintains at least a majority ownership interest.
ARTICLE 12. ARBITRATION
12.1. Any and all claims, disputes or controversies arising under, out of, or
in connection with this Agreement, including any dispute relating to
patent validity or infringement, which have not been resolved by good
faith negotiations between the parties, shall be resolved by final and
binding arbitration under the rules of the American Arbitration
Association, or the Patent Arbitration Rules if applicable. The
arbitrators shall have no power to add to, subtract from or modify any
of the terms or conditions of this Agreement. Any award rendered in such
arbitration may be enforced by either party in either state courts or in
an United States District Court. Each party will select one arbitrator
and those two arbitrators will select a third arbitrator.
12.2. Notwithstanding the foregoing, nothing in this Article shall be
construed to waive any rights or timely performance of any obligations
existing under this Agreement.
ARTICLE 13. TERMINATION
13.1. RESEARCH FOUNDATION shall have the right to terminate this Agreement at
any time upon notice to LICENSEE in the event either (a) if LICENSEE
shall file in any court, pursuant to any statute either of the United
States or any state, a petition in bankruptcy or insolvency or for the
appointment of a receiver or trustee of all or substantially all of
LICENSEE's property, or if LICENSEE shall make an assignment for the
benefit of creditors, or if LICENSEE shall commit any other affirmative
act of insolvency; or (b) if there shall be filed against LICENSEE in
any court, pursuant to any statute either of the United States or any
state, an involuntary petition in bankruptcy or insolvency or for
reorganization, or if there shall be involuntarily appointed a receiver
or trustee of all or substantially all of LICENSEE's property, unless
such petition or appointment is set aside or withdrawn or ceases to be
in effect within [...***...] of the date of the filing or the
appointment.
13.2. Should LICENSEE fail to pay RESEARCH FOUNDATION royalties due and
payable hereunder, RESEARCH FOUNDATION shall have the right to terminate
this Agreement on [...***...] notice, unless LICENSEE shall pay RESEARCH
FOUNDATION within the [...***...] period, all such royalties and
interest due and payable. Upon the expiration of the [...***...] period,
if LICENSEE shall not have paid all such royalties and interest due and
payable, the rights, privileges and license granted hereunder shall
terminate, unless such nonpayment is due to an honest dispute between
the parties as to whether payment actually is due, in which case the
obligation to pay shall be suspended until such dispute is resolved.
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13.3. Upon any material breach or default of this Agreement by LICENSEE, other
than those occurrences set out in Paragraphs 13.1 and 13.2 hereinabove,
which shall always take precedence in that order over any material
breach or default referred to in this Paragraph 13.3, RESEARCH
FOUNDATION shall have the right to terminate this Agreement and the
rights, privileges and license granted hereunder by [...***...] notice
to LICENSEE. Such termination shall become effective unless LICENSEE
shall have cured any such breach or default prior to the expiration of
the [...***...] period.
13.4. LICENSEE shall have the right to terminate this Agreement at any time on
[...***...] notice to RESEARCH FOUNDATION, and upon payment of all
amounts due RESEARCH FOUNDATION through the effective date of the
termination. In the event RESEARCH FOUNDATION or USF breaches the
provision of Section 2.2, and such breach is not cured within
[...***...] of written notice thereof by LICENSEE to RESEARCH
FOUNDATION, the license and rights granted LICENSEE under Article 2
shall convert to a fully paid-up, royalty free, exclusive license.
13.5. 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. LICENSEE may, however,
after the effective date of such termination, sell all Licensed
Products, and complete Licensed Products in the process of manufacture
at the time of such termination and sell the same, provided that
LICENSEE shall pay to RESEARCH FOUNDATION the royalties thereon as
required by Article 4 of this Agreement and shall submit the reports
required by Article 5 hereof on the sales of Licensed Products.
ARTICLE 14. 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 RESEARCH FOUNDATION:
University of South Florida Research Foundation
Attention: Allison Madden, Business Manager
USF Box 30445
Tampa, Florida 33620-3044
In the case of LICENSEE:
Genetronics, Inc. and Genetronics Biomedical, Ltd.
Attention: Martin Nash, CEO
11199 Sorrento Valley Road
San Diego, CA 92121-1334
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ARTICLE 15. MISCELLANEOUS PROVISIONS
15.1. This Agreement shall be construed, governed, interpreted and applied in
accordance with the laws of the State of Florida, U.S.A., except that
questions affecting the construction and effect of any patent shall be
determined by the law of the country in which the patent was granted.
15.2. The parties hereto acknowledge that this Agreement sets forth the entire
Agreement and understanding, and supersedes and makes null and void any
and all prior understandings and agreements, 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.
15.3. 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 parties hereto acknowledge and intend that this Agreement shall
settle all disputes between the parties as to ownership of any patent or
application so long as it is within the Patent Rights, as defined in
Section 1.2 to include U.S. 5,702,359 and U.S. 5,993,434 and their
foreign equivalents, as well as jointly invented patents and
applications as set forth in Section 1.2 and determined by the procedure
set forth in Exhibit I, and, notwithstanding any termination, the
parties waive any right to contest the joint ownership of patents and
applications within Patent Rights. The parties acknowledge the Patent
Rights are jointly owned by LICENSEE and USF. The parties intend and
agree that this clause shall remain in effect and survive any
termination of this Agreement.
15.5 LICENSEE agrees to mark the Licensed Products sold in the United States
with all applicable United States patent numbers within Patent Rights.
All Licensed Products shipped to or sold in other countries shall be
marked in such a manner as to conform with the patent laws and practice
of the country of manufacture or sale.
15.6 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.
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IN WITNESS WHEREOF, the parties have hereunto set their hands and seals
and fully executed this Agreement on the day and year set forth below.
UNIVERSITY OF SOUTH FLORIDA GENETRONICS, INC.
RESEARCH FOUNDATION, INC.
By /s/ Martin Silbiger By /s/ Martin Nash
------------------------------ ------------------------------
Name Martin Silbiger Name Martin Nash
------------------------------ ------------------------------
Title President Title CEO
------------------------------ ------------------------------
Date 9/15/00 Date 9/20/00
------------------------------ ------------------------------
GENETRONICS BIOMEDICAL, LTD.
By /s/ Martin Nash
------------------------------
Name Martin Nash
------------------------------
Title CEO
------------------------------
Date 9/20/00
------------------------------
Acknowledged and Agreed to:
--------------------------------- ---------------------------------
Principal Investigator University of South Florida
<PAGE> 14
Exhibit I
Determination of Inventorship
1. The patent attorney or agent ("Patent Practitioner") most closely
associated with preparation of a patent application that claims priority
from a patent application within Patent Rights shall make a preliminary
determination of inventorship prior to filing the application, based on
the patent laws of the United States ("Preliminary Determination"). If a
patent application was filed prior to a Preliminary Determination being
made, then the parties shall act with haste to initiate the process set
forth in this Exhibit I.
2. The Patent Practitioner shall provide the Preliminary Determination
of inventorship to each of USF and Genetronics, along with a copy of the
claims in the application to be filed.
3. USF and Genetronics shall have one month after receipt of the
Preliminary Determination to either accept or question the Preliminary
Determination, by notification to each other and the Patent
Practitioner. If no notice is given by a party, then the Preliminary
Determination will be deemed accepted by that party.
a. Form of Acceptance Notice: "Pursuant to the License Agreement
between University of South Florida Research Foundation, Inc.,
Genetronics Biomedical Ltd. and Genetronics, Inc., effective May 9,
1995, [USF] [Genetronics] received the Preliminary Determination of
inventorship of the patent application in preparation entitled:
__________________. [USF] [Genetronics] accepts the Preliminary
Determination."
b. Form of Question Notice: "Pursuant to the License Agreement
between University of South Florida Research Foundation, Inc.,
Genetronics Biomedical Ltd. and Genetronics, Inc., effective May 9,
1995, [USF] [Genetronics] received the Preliminary Determination of
inventorship of the patent application in preparation entitled:
__________________. [USF] [Genetronics] has a question about the
Preliminary Determination and requests further information."
4. An acceptance of the Preliminary Determination by both parties, at
any time, shall finalize the inventorship of that patent application
into a Final Determination.
5. If either or both parties question the Preliminary Determination,
then it shall not be finalized at that time. The party questioning the
Preliminary Determination has the right to have a Patent Practitoner of
its choosing review the patent application and conduct interviews, and
make a Second Preliminary Determination as to inventorship. Steps 2 and
3 herein shall be followed with any such Second Preliminary
Determination. In the event a party questions a Preliminary
Determination, it shall have one month thereafter to either provide a
Second Determination or accept the Preliminary Determination.
6. If the parties cannot both accept the Preliminary Determination or
both accept the Second Preliminary Determination, the two Patent
Practitioners shall agree on a third
<PAGE> 15
Patent Practitioner, who shall, within one month, make a Final
Determination based on the patent application and interviews.
7. USF and Genetronics agree that:
a. The process set forth in this Exhibit I must be carried out in
extreme haste, as a patent application will not be filed until a Final
Determination is made. Delays in filing a patent application can result
in the invention becoming unpatentable. The parties shall endeavor to
complete each step in the analysis in less than the prescribed time
period.
b. The Final Determination made pursuant to Step 6 shall be the
final inventorship of an application.
c. Neither USF nor Genetronics shall raise a legal challenge of
any kind to a Final Determination made pursuant to this Exhibit I,
unless the elements of the claims of the patent application or
subsequent patent are substantially changed from the claims on which the
Final Determination was made.
