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LICENSE AGREEMENT BETWEEN
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA AND
E. COLI MEASUREMENT SYSTEMS, INC.
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TABLE OF CONTENTS
1. DEFINITIONS 1
2. GRANT 3
3. SUBLICENSES 3
4. FEESANDROYALTIES 4
5. DILIGENCE 5
6. REPORTS 5
7. BOOKS AND RECORDS 6
8. TERM OF THE LICENSE AGREEMENT 6
9. TERMINATION BY THE UNIVERSITY 7
10. TERMINATION BY THE LICENSEE 7
11. PATENT PROSECUTION AND MAINTENANCE 8
12. USE OF NAMES, TRADENAMES AND TRADEMARKS 8
13. WARRANTYANDDISCLAIMER 9
14. INFRINGEMENT 9
15. WAIVER 11
16. ASSIGNABILITY 11
17. INDEMNITY - PRODUCT LIABILITY 12
18. LATEPAYMENTS 13
19. NOTICES 13
20. FORCE MAJEURE 14
21. EXPORT CONTROL LAWS 14
22. PREFERENCE FOR UNITED STATES INDUSTRY 14
23. DISPUTE RESOLUTION 14
24. CONFLICT OF INTEREST 15
25. PATENT MARKING 15
26. GOVERNING LAW 15
27. SURVIVAL 15
28. GOVERNMENT APPROVAL OR REGISTRATION 15
29. DISPOSITION OF LICENSED PRODUCTS 15
30. MISCELLANEOUS 16
Appendix A - Patent Rights 17
Appendix B - Assignment and Confirmatory License 18
Appendix C - Fees and Royalties 19
Appendix D - Milestones 20
Appendix E - Report Format 21
Appendix F - Financial Report Format 22
Appendix G - Designation of The Licensing Team 24
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LICENSE AGREEMENT
THIS LICENSE AGREEMENT is entered into by and between THE REGENTS OF THE
UNIVERSITY OF CALIFORNIA, a nonprofit educational institution and a public
corporation of the State of California having its principal office at 1111
Franklin Street, Oakland, CA 94612-3550, hereinafter referred to as the
"University," and E. coli Measurement Systems, Inc., a corporation of the state
of Florida, hereinafter referred to as the "Licensee," the parties to this
License Agreement being referred to individually as a "Party," and collectively
as "Parties."
The University conducts research and development at Los Alamos National
Laboratory for the U.S. Government under Contract No. W-7405-ENG-36, hereinafter
referred to as "Contract," with the U.S. Department of Energy.
Rights in inventions and technical data made in the course of the University's
research and development at Los Alamos National Laboratory are governed by the
terms and conditions of the Contract.
Certain TECHNOLOGY relating to ultrasensitive detection of specific nucleic acid
sequences has been developed in the course of the University's research and
development at Los Alamos National Laboratory.
The Licensee will enter into a mutually agreeable research and development
agreement under which a prototype instrument incorporating the TECHNOLOGY will
be designed, built, and delivered to the Licensee.
The University desires that such TECHNOLOGY be developed and utilized to the
fullest extent possible so as to enhance the accrual of economic and
technological benefits to the U.S. domestic economy, and is therefore willing to
grant an exclusive license to Licensee in patent rights that protect the
TECHNOLOGY.
The Licensee desires to obtain from the University worldwide exclusive rights
for the commercial development, manufacture, use, and sale of the TECHNOLOGY in
the field of detecting microbial contamination in food and water.
NOW, THEREFORE, the Parties agree as follows:
1. DEFINITIONS
1.1 "TECHNOLOGY" means technical information, know-how, data and PATENT
RIGHTS owned or controlled by the University and relating to ultrasensitive
detection of specific nucleic acid sequences.
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1.2 "PATENT RIGHTS" means the University's rights arising from U.S. and
foreign patents or applications, including any continuing applications,
divisionals, and reissues thereof (but not including continuations-in-part); and
any patents issuing on said applications identified in Appendix A, attached
hereto.
1.3 "LICENSED METHOD(S)" means any method, procedure or process whose
use, but for the license granted to Licensee herein, would constitute an
infringement of a subsisting claim of a patent or patent application identified
in Appendix A.
1.4 "LICENSED PRODUCT(S)" means any article of manufacture, machine or
composition of matter whose manufacture, use, sale, or offer for sale, but for
the license granted to Licensee herein, would constitute an infringement of a
subsisting claim of a patent or patent application identified in Appendix A, and
any article of manufacture, machine or composition of matter produced through
the practice of LICENSED METHOD or whose only substantial use is to practice
LICENSED METHOD.
1.5 "LICENSED INVENTION(S)" means any LICENSED PRODUCT or LICENSED
METHOD.
1.6 "SALE(S)" means disposing of LICENSED PRODUCT by sale, lease, or
other delivery or practicing LICENSED METHQD. A SALE occurs when LICENSED
PRODUCTS are invoiced, or when delivered to a third person, whichever occurs
first.
1.7. "SALES PRICE" means the invoice prices for SALES or, if LICENSED
INVENTIONS are not sold but otherwise disposed of, the selling price at which
products or services of similar kind and quality, sold in similar quantities in
which LICENSED INVENTIONS are being disposed of, are being offered for SALE by
Licensee. Where such LICENSED INVENTIONS are not currently being offered for
SALE by Licensee, the SALES PRICE for purposes of computing royalties is the
average selling price at which similar kind and quality, sold in similar
quantities, are then currently being offered for sale by other companies. If
such products are not currently sold or offered for sale by others, then the
SALES PRICE, for purposes of computing royalties, is Licensee's cost of
manufacture determined by Licensee's customary accounting procedures, plus
Licensee's standard mark-up.
1.8 "NET SALES" means the gross amounts for SALES at SALES PRICE by
Licensee and its' sublicensee(s), less the following deductions where
applicable: (a) SALES returns; (b) normal and customary allowances; (c) trade
discounts; (d) SALES to the U.S. Government pursuant to Paragraph 4.2 and (e)
transportation charges, duties and tariffs only if separately stated on an
invoice; but before deduction of sales and excise taxes, costs of insurance, and
agents' commissions;
1.9 "FIELD OF USE" means a limitation of the application or utilization
of PATENT RIGHTS and is defined in Appendix A.
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2. GRANT
2.1 The University grants to the Licensee, subject to Paragraphs 2.2
and 2.3, an exclusive license to make, use, import, sell and offer to sell
LICENSED INVENTIONS under the PATENT RIGHTS, with the right to sublicense others
under the terms of Article 3, limited to the FIELD OF USE recited in Appendix A.
2.2. Rights not expressly granted to Licensee herein are expressly
reserved to the University.
2.3 The University expressly reserves the right to use the TECHNOLOGY,
including the right to make, have made, use and have used LICENSED INVENTIONS,
for any purpose, including performing Cooperative Research and Development
Agreements (CRADAs), Work for Others (WFOs), and User Facility Agreements
(UFAs). In conducting such activities, the University will act at all times to
preserve the exclusive rights herein granted to Licensee.
2.4 The U.S. Government has a nonexclusive, nontransferable,
irrevocable, paid-up license to practice or have practiced throughout the world,
for or on behalf of the U.S. Government, inventions covered by the University's
PATENT RIGHTS, and has certain other rights under 35 U.S.C: 200-212 and
applicable implementing regulations and under the U.S. Department of Energy
Confirmatory License, attached as Appendix B to this License Agreement.
2.5 Under 35 U.S.C. 203 the U.S. Department of Energy has the right to
require the Licensee to grant a nonexclusive, partially exclusive or exclusive
license under the PATENT RIGHTS in any field of use to a responsible applicant
or applicants.
2.5 The Licensee will make available to the University and will grant
an irrevocable, paid-up, royalty-free nonexclusive license to the University to
make and use for any purpose permitted under the Contract any improvements or
developments to the TECHNOLOGY made by Licensee.
3. SUBLICENSES
3.1 The University grants to Licensee the right to grant sublicenses to
third parties to make, have made, use and sell LICENSED INVENTIONS in which the
Licensee has current limited exclusive rights under this License.
a Sublicenses granted under this clause must contain all of the
conditions, restrictions and reservations of this License
Agreement, except for those provisions related to fees -and
royalties, and shall preserve the rights and reservations of the
University and the U.S. Government existing under this License
Agreement.
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3.2 Licensee shall provide the University with a copy of each
sublicense by at least thirty (30) days prior to its execution.
3.3. Licensee must pay to the University the payments prescribed in
Appendix C, Paragraph 1, Part c. With respect to any sublicense, this obligation
continues as long as a sublicense granted by Licensee is in effect, and is an
obligation of the Licensee whether or not royalty payments are actually received
by Licensee from its sublicensee(s).
3.4. Licensee must deliver to the University copies of all progress and
financial reports submitted to Licensee by its sublicensees. With respect to any
sublicense, this obligation continues as long as a sublicense granted by
Licensee is in effect.
3.5 Termination of this License Agreement automatically operates as an
assignment by Licensee to the University of all Licensee's right, title and
interest in and to each sublicense granted by Licensee. If this License
Agreement is terminated by either Party, any sublicensee(s) not in default of
the terms and conditions of its sublicense agreement with Licensee may make a
written election to continue such sublicense agreement as a license agreement
with the University. Licensee will give its sublicensee(s) written notice thirty
(30) days prior to effective date of termination of this License Agreement.
Sublicensee(s) must makes a written election within thirty (30) days thereafter.
4. FEES AND ROYALTIES
4.1 For the rights, privileges and license granted under this License
Agreement, Licensee shall pay to the University the fees and royalties specified
in Appendix C.
4.2 Notwithstanding Paragraph 4.1 above, Licensee has no obligation to
pay royalties on SALES of LICENSED INVENTIONS to the U.S. Government or any
agency thereof or any U.S. Government contractor who certifies that its purchase
of the LICENSED INVENTION is for or on behalf of the U.S. Government. Licensee
will not impose royalty charges on SALES of LICENSED INVENTIONS to U.S.
Government entities and will refund to them any royalty collected on such SALES.
4.3 The first royalty payment due under this License Agreement is based
on NET SALES by Licensee and its sublicensees from the effective date of this
License Agreement through June 30 of the same calendar year, if the effective
date is before June 30, or through December 31 if the effective date is after
June 30. Payment must be made within thirty (30) days from the end of such
period. Subsequent royalty payments shall be calculated based on NET SALES by
Licensee and its sublicensees during the semiannual periods extending from
January 1 through June 30 and from July 1 through December 31 of each year, for
as long as this License Agreement remains in effect. Royalty payments must be
paid within thirty (30) days from the end of the respective semiannual period.
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4.4 All payments due the University must be paid in U.S. currency to
the University of California,- Los Alamos National Laboratory, at the address
set forth in Paragraph 19.1. Licensee must convert NET SALES invoiced in foreign
currency into equivalent U.S. currency at the exchange rate for the foreign
currency prevailing as of the last day of the reporting period, as reported in
the Wall Street Journal.
5. DILIGENCE
5.1 Licensee shall use its best efforts to bring one or more LICENSED
INVENTIONS to market through an innovative program for exploitation of the
PATENT RIGHTS and to continue a best-efforts marketing program for one or more
LICENSED INVENTIONS throughout the life of this License Agreement.
5.2 To be in compliance with Paragraph 5.1, Licensee must adhere to the
Milestones set out in Appendix D.
5.3 Article 5 is a material term of this Agreement, without which the
license grant under Article 2 would not have been made, and Licensee's failure
to perform in accordance with Paragraphs 5.1 and 5.2 above shall be grounds for
the University to terminate this License Agreement pursuant to Paragraph 9.1
of-this License Agreement.
6. REPORTS
6.1 Progress Reports. Licensee must submit semiannual progress reports.
The reports are due on the dates that royalty payments are due under Article 4
AND MUST BE SUBMITTED REGARDLESS OF WHETHER ANY PAYMENT IS MADE. This report
must cover the period for which royalty payments are calculated and show the
Licensee's activities related to the development of the TECHNOLOGY and the
securing of approvals necessary for commercialization of the TECHNOLOGY. The
reports must be certified by an officer of the Licensee and must conform with
the Report Format set forth in Appendix E hereof. Reports marked by Licensee as
proprietary financial or business information of the Licensee will be treated as
such by the University. Licensee's failure to submit reports pursuant to this
Paragraph shall be grounds for the University to terminate this License
Agreement pursuant to Paragraph 9.1.
6.2 Financial Reports. Licensee must submit semiannual financial
reports. The reports are due on the dates that royalty payments are due under
Article 4 AND MUST BE SUBMITTED REGARDLESS OF WHETHER ANY PAYMENT IS MADE. This
report must cover the period for which royalty payments are calculated and must
show total SALES or commercial uses made of LICENSED INVENTIONS by Licensee and
any sublicensee(s) during the reporting period. IF NO SALE, SUBLICENSE, OR USE
OF LICENSED PRODUCTOR LICENSED METHOD HAS BEEN MADE DURING A REPORTING PERIOD, A
STATEMENT TO THIS EFFECT MUST BE MADE. The
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reports must be certified by an officer of the Licensee and must conform with
the Report Format set forth in Appendix F hereof. Reports marked by Licensee as
proprietary financial or business information of the Licensee will be treated as
such by the University. Licensee's failure to submit reports pursuant to this
Paragraph shall be grounds for the University to terminate this License
Agreement pursuant to Paragraph 9.1.
7. BOOKS AND RECORDS
7.1 The Licensee must keep books and records according to Generally
Accepted Accounting Principles, accurately showing all SALES of LICENSED
PRODUCTS or practice of LICENSED METHODS by Licensee or sublicensees under the
terms of this License Agreement. Such books and records must be open to
inspection and audit on a proprietary basis by representatives or agents of the
University at reasonable times, but in no event more than once for each calendar
year, for the purpose of verifying the accuracy of the semiannual financial and
progress reports and the royalties due. Licensee may request that any such
inspection and audit be conducted by an independent auditor, in which event,
Licensee will pay the costs of such auditor.
7.2 The fees and expenses of the University's representatives
performing the inspection and audit will be borne by the University. However, if
an error in royalties owed the University of more than Ten Thousand dollars
($10,000) is discovered by the representatives of the University, then Licensee
will pay the fees and expenses of said representatives within thirty (30) days
after receipt of invoice.
7.3 The books and records required by Article 6 must be preserved for
at least three (3) years from the date that the royalty payments were due.
8. TERM OF THE LICENSE AGREEMENT
8.1 This License Agreement is effective as of the later of the dates of
execution by the Parties and the University's receipt of the License Issue Fee
(as specified in Appendix C).
8.2 This License Agreement is in full force and effect from the
effective date and remains in effect until the expiration of the last to expire
of the patents included within the University's PATENT RIGHTS, unless sooner
terminated by operation of law or by acts of either of the Parties in accordance
with the terms of this License Agreement.
8.3 Licensee shall provide notice to University of its intention to
file a voluntary petition in bankruptcy or of another party's intention to file
an involuntary petition in bankruptcy for Licensee, said notice to be received
by University at least thirty (30) days prior to filing such petition. The
University may terminate this License Agreement upon receipt of such notice at
its sole discretion. Licensee's failure to provide such notice to University
will be deemed a material, pre-petition, incurable breach of this License
Agreement and the License Agreement will terminate automatically on the date of
filing such voluntary or involuntary petition in bankruptcy.
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9. TERMINATION BY THE UNIVERSITY
9.1 If the Licensee fails to deliver to the University any report when
due, or fails to pay any royalty or fee when due, or if the Licensee breaches
any material term of this License Agreement, including, but not limited to,
Article 5 DILIGENCE, the University may give written notice of default to the
Licensee. If the Licensee fails to cure the default within thirty (30) days from
the date of delivery of notice to Licensee, the University has the right to
terminate this License Agreement. This License Agreement will terminate upon
delivery of written notice of termination to the Licensee. Termination does not
relieve the Licensee of its obligation to pay any royalty or license fees due or
owing at the time of termination and does not impair any accrued right of the
University. Licensee will return all tangible property given to Licensee by the
University in support of the rights granted hereunder and return or destroy all
intangible property as directed by the University.
10. TERMINATION BY THE LICENSEE
10.1 The Licensee may terminate this License Agreement by giving
written notice to the University. Such termination will be effective ninety (90)
days from the date of delivery of the notice, and all the Licensee's rights
under this License Agreement will cease as of that date.
10.2 If Licensee exercises its option to terminate this License
Agreement without cause, then Licensee agrees to pay the University the Annual
License Fee multiplied by the number of years remaining under this License
Agreement (from the date of notification of termination to the expiration of the
last to expire of the patents included within the University's PATENT RIGHTS)
multiplied by 0.70, in a lump sum as liquidated damages, on the effective date
of termination.
10.3 If Licensee terminates this License Agreement within four (4)
years of the effective date of this License Agreement, then the liquidated
damage provisions of Paragraph 10.2 will not apply.
10.4 Termination pursuant to this Article does not relieve the Licensee
of any obligation or liability accrued by Licensee prior to the effective date
of termination or affect any rights of the University arising under this License
Agreement prior to termination. Licensee will return all tangible property given
to Licensee by the University in support of the rights granted hereunder and
return or destroy all intangible property as directed by the University.
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11. PATENT PROSECUTION AND MAINTENANCE
11.1 The University will file, prosecute, and maintain the U.S. and
international patent applications and patents listed in Appendix A. The costs
associated with U.S. cases will be borne by the University. The costs associated
with international cases will be borne by Licensee pro rata with other extant
licensees for each national case.
11.2 The University will invoice Licensee for costs under Paragraph
11.1 as expenses are estimated by the University and Licensee must pay such
invoices within sixty (60) days of the invoice date. Licensee's obligations to
pay costs of foreign patents and patent applications continue until this License
Agreement expires or is terminated by either Party, or until such time as
Appendix A is amended to delete one or more national cases, irrespective of when
the University actually pays the expenses.
12. USE OF NAMES, TRADENAMES AND TRADEMARKS AND
NONDISCLOSURE OF AGREEMENT TERMS
12.1 Nothing contained in this License Agreement confers any right to
use in advertising, publicity, or other promotional activities any name,
tradename, trademark, or other designation of either Party hereto or the
Department of Energy or Los Alamos National Laboratory (including any
contraction, abbreviation, or simulation of any of the foregoing). Unless
required by law, the use of the name "the University of California," "The
Regents of the University of California," or the name of any facility or campus
of the University of California is expressly prohibited.
12.2 The University may disclose to third parties the existence of this
License Agreement and the extent of the grant in Article 2, but will not
disclose information identified as proprietary by Licensee under Paragraph 12.4,
except where the University is required to release information under either the
California Public Records Act or other applicable law. A decision to release
information under applicable law will be at the sole discretion of the
University.
12.3 Licensee may disclose to third parties the existence of this
License Agreement and the terms and conditions to the extent determined
appropriate by Licensee.
12.4 Licensee will mark those portions of Appendices A, C, and D of
this License Agreement that contain proprietary business information of Licensee
and return such marked copy of the License Agreement to the University within
thirty (30) days of the effective date of this License Agreement.
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13. WARRANTY AND DISCLAIMER
13.1 The University warrants that it is the lawful owner of the PATENT
RIGHTS listed in Paragraph 1.2.
13.2 The TECHNOLOGY IS PROVIDED AS IS, WITHOUT WARRANTY OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER WARRANTY,
EXPRESS OR IMPLIED. NEITHER THE UNIVERSITY NOR THE U.S. GOVERNMENT MAKES ANY
REPRESENTATION OR WARRANTY THAT THE LICENSED PRODUCTS OR LICENSED METHODS WILL
NOT INFRINGE ANY PATENT OR OTHER PROPRIETARY RIGHT. IN NO EVENT WILL THE
UNIVERSITY OR THE U.S. GOVERNMENT BE LIABLE FOR ANY INCIDENTAL, SPECIAL, OR
CONSEQUENTIAL DAMAGES RESULTING FROM EXERCISE OF THIS LICENSE OR THE USE OF
LICENSED PRODUCTS OR LICENSED METHODS.
13.3 Nothing in this License Agreement shall be construed as:
a. a warranty or representation by the University or the U.S.
Government as to the validity or scope of University's PATENT
RIGHTS;
b. an obligation to bring or prosecute actions or suits against
third parties for patent infringement, except as provided in
Article 14;
c. conferring by implication, estoppel, or otherwise any license or
rights under any patents of the University or the U.S.
Government other than University's PATENT RIGHTS; or
d. an obligation by University or the U. S. Government to furnish
any know-how, technical assistance, or technical data other than
as stated in Article 2 above.
13.4 NEITHER THE UNITED STATES NOR THE U.S. DEPARTMENT OF ENERGY, NOR
THE UNIVERSITY OF CALIFORNIA NOR ANY OF THEIR EMPLOYEES, AGENTS OR CONTRACTORS
MAKES ANY WARRANTY, EXPRESS OR IMPLIED, OR ASSUMES ANY LEGAL LIABILITY OR
RESPONSIBILITY FOR THE ACCURACY, COMPLETENESS, OR USEFULNESS OF ANY SOFTWARE,
INFORMATION, APPARATUS, PRODUCT, OR PROCESS DISCLOSED, OR REPRESENTS THAT ITS
USE WOULD NOT INFRINGE PRIVATELY OWNED RIGHTS.
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14. INFRINGEMENT
14.1 In the event that either Party to this License Agreement learns of
the infringement of any of University's PATENT RIGHTS, that Party will inform
the other Party in writing and will provide the other Party with evidence of the
infringement.
14.2 The Parties will cooperate to terminate the infringement without
litigation. Licensee agrees that during the period within which and in a
jurisdiction where Licensee has exclusive rights under this Agreement, Licensee
will not notify a third party about the infringement without first obtaining
written consent of the University, which may be withheld at the sole discretion
of the University.
14.3 If the efforts of the Parties are not successful in abating the
infringement within ninety (90) days after the infringer has been formally
notified of University PATENT RIGHTS, the University has the right to:
a. commence suit on its own account;
b. commence suit jointly with the Licensee; or
c. refuse to participate in a suit.
The University shall give written notice to the Licensee, of its election,
within ten (10) business days after the expiration of the ninety (90) day
period. If the University elects not to commence suit on its own account or not
to commence suit jointly with the Licensee, then Licensee shall have the right
to commence suit on its own account, and, if required by law, University will
join the suit as nominal party plaintiff, if the infringement occurred during
the term of this License Agreement and in a country where the Licensee had
exclusive rights under this License Agreement.
14.4 Any legal action under this Article will be at the expense of the
Party initiating the legal action. Licensee will bear all expenses from any
action brought by Licensee under this action, including attorney fees and costs
of both Parties and the defense of any counter-claims brought by the infringer.
If legal action is brought by Licensee, the University will be entitled to
twenty-five percent (25%) of any damage recovery based on lost profits of
Licensee or a reasonable royalty or both. Legal action brought jointly by the
University and the Licensee and fully participated in by both will be at the
joint expense of the Parties and all recoveries will be shared jointly by them
in proportion to the share of expenses paid by each.
14.5 Each Party will cooperate with the other in proceedings instituted
hereunder, provided expenses are borne by the Party bringing suit. Litigation
will be controlled by the Party bringing suit, except that the University will
control the litigation if brought jointly. The University may be represented by
its choice of counsel in any suit brought by the Licensee.
14.6 Neither Party will settle or compromise any suit without the other
Party's written consent.
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15. WAIVER
15.1 No waiver by either Party of any breach or default of any of the
covenants or terms of this License Agreement will be deemed a waiver as to any
prior, subsequent and/or similar breach or default.
16. ASSIGNABILITY
16.1 This License Agreement may be assigned by the University, but
shall be personal to Licensee and assignable by Licensee only with the prior
written consent of the University. Such consent will not be unreasonably
withheld.
16.2 In the event that a controlling interest in Licensee is obtained
by an entity different than the entity having a controlling interest on the
effective date of this License Agreement, the University may terminate this
License Agreement at its discretion, which discretion shall not be exercised
unreasonably. Licensee will notify the University of ninety (90) days prior to
any such change in controlling interest.
16.3 The University may withhold consent for an assignment or may
choose to terminate the License Agreement upon a change in controlling interest
under circumstances including, but not limited to, the following:
a. the assignee or entity acquiring a controlling interest is
located in, doing business with, or organized under the laws of
a country that the DOE considers to be a sensitive country, such
consideration to be based on DOE internal policies and
procedures at the time the assignment or change of controlling
interest occurs;
b. the University reasonably concludes that the assignee or entity
acquiring a controlling interest is not capable of meeting the
Licensee's obligations under this License Agreement;
c. the University reasonably concludes that the assignee or entity
acquiring a controlling interest is not capable of complying
with DOE policies in effect at the time the assignment or change
of controlling interest occurs; or
d. the assignee or entity acquiring a controlling interest refuses
to agree to any of the terms and conditions of this License
Agreement.
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16.4 It is the intent of the Licensee to merge with CENTREX, Inc., an
Oklahoma-based start-up company. Upon completion of this merger CENTREX will own
all assets of the Licensee. The Licensee will notify the University within
thirty (30) days of the consummation of this merger. This University will
approve this change in controlling interest contingent upon the Licensee showing
to the satisfaction of the University that the provisions of Paragraph 16.3 do
not apply to CENTREX.
17. INDEMNITY - PRODUCT LIABILITY
17.1 The Licensee will indemnify the U.S. Government and the
University, and their officers, employees, and agents, against any damages,
costs and expenses, including attorneys' fees, arising from the
commercialization and utilization of the University PATENT RIGHTS by Licensee
and its' sublicensee(s), including but not limited to the making, using, selling
or exporting of products, processes, or services derived therefrom. This
indemnification will include, but will not be limited to, product liability.
17.2 Licensee will insure its activities relating to the License
Agreement at its own expense with an insurance company acceptable to the
University or provide a Certification of Self-Insurance acceptable to the
University. Licensee will obtain, keep in force, and maintain a minimum of One
Million Dollars ($1,000,000) of Comprehensive or Commercial Form General
Liability Insurance (including contractual liability and product liability) or
an amount no less than fifty percent (50%) of sales up to Seven Million Five
Hundred Thousand Dollars ($7,500,000), whichever amount is greater. These
coverages will not limit the liability of Licensee in any way. Licensee will
provide the University with certificates of insurance, including renewals, that
show compliance with these requirements at least thirty (30) days before the
first commercial sale or distribution of LICENSED PRODUCTS or use of LICENSED
METHOD. Licensee's failure to maintain this insurance will be considered a
material breach of this License Agreement and the license will automatically
terminate on the date of the first Sale of LICENSED INVENTION without such
insurance.
a. If such insurance is written on a claims-made form, coverage
shall provide for a retroactive date of placement prior to or
coinciding with the effective date of this License Agreement.
b. Licensee shall maintain the General Liability Insurance
specified herein during (a) the period that the LICENSED PRODUCT
or LICENSED METHOD is being commercially distributed or sold
(other than for the purpose of obtaining regulatory approvals)
by Licensee or by a sublicensee, affiliate, or agent of
Licensee, and (b) a reasonable period thereafter, but in no
event less than five (5) years from the effective date of
termination of this License Agreement.
17.3 Insurance coverage as required under Paragraph 17.2 above shall:
a. Provide for thirty (30) day advance written notice to the
University of cancellation or of any modification.
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b. Indicate that the U.S. Department of Energy and The Regents of
the University of California and its officers, employees,
students, and agents, have been endorsed thereon as additional
named insured.
c. Include a provision that the coverages will be primary and will
not participate with, nor will be excess over, any valid and
collectible insurance or program of self-insured carried or
maintained by University.
18. LATEPAYMENTS
18.1 In the event royalty payments or fees are not received by the
University when due, Licensee will pay to the University interest charges at the
rate of eight percent (8%) plus prime per annum calculated from the date the
payment or fee was due to the date payment is actually made.
19. NOTICES
19.1 Any payment, notice, or other communication required or permitted
to be given to either Party hereto is deemed properly given and effective on the
date of delivery if delivered in person or by first-class certified mail,
postage paid, or by facsimile transmission with confirmation, to the respective
address or facsimile number given below, or to any other address designated by
written notice to the other Party as follows:
In the case of the Licensee:
---------------------------
E. coli Measurement Systems, Inc.
202 South Wheeler Street
Plant City, Florida 33566
Attention: Clifford M. Gross, Ph.D.
FAX Number: (813) 754-2383
In the case of the University:
-----------------------------
Los Alamos National Laboratory
Civilian and Industrial Technology
Program Office
P.O. Box 1663, Mail Stop C334
Los Alamos, New Mexico 87545
Attention: License Administrator
FAX Number (505) 665-0154
For payments due the University:
-------------------------------
Los Alamos National Laboratory
Civilian and Industrial Technology
Program Office
P.O. Box 462
Los Alamos, NM 87544
Attention: Licensing Administrator
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For Courier Service:
-------------------
Los Alamos National Laboratory
Civilian and Industrial Technology Program Office
2237 Trinity Drive
Los Alamos, NM 87544
Attention: License Administrator
20. FORCE MAJEURE
20.1 Neither Party is responsible for delay or failure in performance
of any of the obligations imposed by this License Agreement, if the failure is
caused by fire, flood, explosion, lightning, windstorm, earthquake, subsidence
of soil, court order or government interference, civil commotion, riot, war, or
by any cause of like or unlike nature beyond the control and without fault or
negligence of a Party.
21. EXPORT CONTROL LAWS
21.1 Licensee acknowledges and understands that the export of certain
goods or technical data from the United States requires an export control
license from the U.S. Government, and that failure to obtain an export control
license may result in violation of U.S. laws and a material breach of this
License Agreement.
22. PREFERENCE FOR UNITED STATES INDUSTRY
22.1 Any products embodying LICENSED PRODUCTS or produced through the
use of LICENSED METHODS will be manufactured substantially in the United States.
23. DISPUTE RESOLUTION
23.1 The individuals designated in Paragraph 19.1, for notices, agree
to exert their best efforts to resolve disputes arising from this License
Agreement. In the event that any claim or controversy arising out of this
License Agreement which can not be resolved by the aforestated individuals or
their successors, such matter shall immediately be referred jointly to the
respective management of each Party who shall meet and undertake to resolve the
matter. For Licensee, such management shall be represented by the Chief
Executive Officer. For the University, such management shall be represented by
Director of the Civilian and Industrial Technology Program Office. In the event
of the unavailability of the aforesaid individuals, for any reason, an alternate
individual at a comparable level of management may be substituted. In the event
these individuals fail to resolve the matter within sixty (60) days of referral
of the matter to them, either Party may give the other Party notice of its
intention to seek other recourse.
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24. CONFLICT OF INTEREST
24.1 Licensee represents that Licensee does not now employ and has made
no offers of employment to members of the University negotiating team set out in
Appendix G. Licensee agrees to make no offers of employment to any member of the
University negotiating team for a period of two (2) years after the effective
date of this License Agreement without the express written permission of the
University. Licensee understands that this clause is a material undertaking by
Licensee without which the University would not enter into this License
Agreement. The University has the option to terminate this License Agreement for
breach of this clause by Licensee.
25. PATENT MARKING
25.1 Licensee agrees to mark, in accordance with the applicable patent
marking statute, all LICENSED PRODUCTS, and their containers, which have been
made, used, sold or otherwise transferred to a third party, under the terms of
this License Agreement.
26. GOVERNING LAW
26.1 This License Agreement will be interpreted and construed in
accordance with the laws of the State of New Mexico.
27. SURVIVAL
27.1 When this License Agreement expires or is terminated in accordance
with the terms hereof, Paragraphs 3.3, 3.4,12.1,17.1,17.2, 17.3,18.1,24.1 and
27.1 shall survive any expiration or termination.
28. GOVERNMENT APPROVAL OR REGISTRATION
28.1 If this License Agreement or any associated transaction is
required by the law of any nation to be either approved, permitted or registered
with any governmental agency, Licensee will assume all legal obligations to do
so. Licensee will notify University if Licensee becomes aware that this License
Agreement is subject to a U.S. or foreign government reporting, permitting, or
approval requirement. Licensee will make all necessary findings and pay all
costs including fees, penalties and all other out-of-pocket costs associated
with such reporting, permitting or approval process.
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29. DISPOSITION OF LICENSED PRODUCTS ON HAND UPON TERMINATION
29.1 Upon termination of this License Agreement by either Party the
Licensee shall provide the University with a written list of all LICENSED
PRODUCTS in the process of being sold, sublicensed, or in use by Licensee, and
shall destroy all LICENSED PRODUCTS in the possession of Licensee unless
--otherwise directed by University.
30. MISCELLANEOUS
30.1 The headings of the several sections of this License Agreement are
included for convenience of reference only and are not intended to be a part of
or to affect the meaning or interpretation of this License Agreement.
30.2 No amendment or modification of this License Agreement is binding
on the Parties unless made in a writing executed by duly authorized
representatives of the Parties.
30.3 This License Agreement embodies the entire understanding of the
Parties and shall supersede all previous communications, representations, or
understandings, either oral or written, between the Parties relating to this
License Agreement.
30.4 In the event any one or more of the provisions of this License
Agreement is held to be invalid, illegal, or unenforceable in any respect, the
invalidity, illegality, or unenforceability will not affect any other provisions
hereof, and this License Agreement will be construed as if such invalid or
illegal or unenforceable provisions had never been part of this License
Agreement.
IN WITNESS WHEREOF, both the University and the Licensee have executed
this License Agreement, in duplicate originals, by their respective officers on
the day and year hereinafter written.
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