Exhibit 10.32
Confidential materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
LICENSE AGREEMENT
MICHIGAN FILE [**], [**], [**] & [**] TECHNOLOGY
This Agreement is effective as of the 30th day of November, 1997 (the "Effective
Date"), between Reprogenesis, Inc., a Texas corporation with offices located at
▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇, ▇▇. ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇ ("LICENSEE"), and
the Regents of the University of Michigan, a constitutional corporation of the
State of Michigan ("MICHIGAN"). LICENSEE and MICHIGAN agree as follows:
1. BACKGROUND.
1.1 MICHIGAN has developed rights, including potential patent rights, in
"TECHNOLOGY" as defined below.
1.2 MICHIGAN has granted to LICENSEE an option to enter into this Agreement
under an option agreement made effective on July 1, 1996.
1.3 LICENSEE has timely exercised its option under such option agreement and
MICHIGAN has extended the exercise period stated therein until and
including November 30, 1997.
1.4 LICENSEE desires to obtain, and MICHIGAN, consistent with its mission of
education and research, desires to grant, a license to the TECHNOLOGY on
the terms and conditions listed below.
2. DEFINITIONS.
2.1 "Affiliate(s)" means any individual, corporation, partnership,
proprietorship or other entity controlled by, controlling, or under common
control with LICENSEE through equity ownership, ability to elect
directors, or because a majority of directors overlap, and includes any
individual, corporation, partnership, proprietorship or other entity
directly or indirectly owning, owned by or under common ownership with
LICENSEE to the extent of twenty-five percent (25%) or more of the voting
shares, including shares owned beneficially by such party.
2.2 "Field(s) of Use" refers to the field or fields for which "Products" (as
defined in Paragraph 2.10 below) may be designed, manufactured, used
and/or marketed under this Agreement, and means all fields of use.
2.3 "Confidential Information" means any confidential or proprietary
information furnished by one Party (the "Disclosing Party") to the other
Party (the "Receiving Party") as required by this Agreement, provided that
such information is designated as confidential as set out in Paragraph
30.1 (Confidential Information includes, without limitation, royalty
reports furnished to MICHIGAN under Article 5, but specifically excludes
the totals of royalties paid to MICHIGAN, and the existence and terms of
this Agreement).
2.4 "First Commercial Reagent Sale" means the first sale of any Product by
LICENSEE or an Affiliate or "Sublicensee" (as defined in Paragraph 2.12
below), if such Product is not sold as a drug, device or biologic for use
in the practice of veterinary or human medicine either alone or in
combination with other substances, and requires no governmental approval
or license to be marketed.
2.5 "First Commercial Sale" means the first sale not a First Commercial
Reagent Sale of any Product by LICENSEE or an Affiliate or Sublicensee,
other than sale of a Product for use in field trials or in clinical trials
being conducted to obtain FDA or other governmental approvals to market
Products. LICENSEE shall demonstrate to MICHIGAN's reasonable satisfaction
that such sale is an arm's length transaction entered into in good faith
between buyer and LICENSEE or an Affiliate or Sublicensee.
2.6 "Gross Sublicensing Revenues" means all amounts received and all other
consideration received (or, when in a form other than cash or its
equivalent, the fair market value thereof when received) by LICENSEE and
its Affiliates under any sublicense to a Sublicensee, and as a result of
any use, distribution, or sale of Products (as defined in Paragraph 2.10
below) where Net Sales does not include such amounts and other
consideration.
2.7 "Licensed Patent(s)" means all patents and patent applications, all
foreign equivalent patent applications and Patent Cooperation Treaty
filings, and all patents issuing therefrom, in which MICHIGAN has or
acquires a property interest, and
(1) which cover an invention included in the TECHNOLOGY (Appendix A lists
the patent applications currently filed on inventions included in the
TECHNOLOGY), or
(2) which this definition includes by operation of Paragraph 9.3 of this
Agreement.
2.8 "Net Sales" means the sum, over the term of this Agreement, of all amounts
received and all other consideration received (or, when in a form other
than cash or its equivalent, the fair market value thereof when received)
by LICENSEE and its Affiliates from persons or entities due to or by
reason of the sale, distribution or use of Products, less the following
deductions and offsets, but only to the extent such sums are otherwise
included in the computation of Net Sales, or are paid by LICENSEE and not
otherwise reimbursed: refunds, rebates, replacements or credits actually
allowed and taken by purchasers for return of Products; customary trade,
quantity and cash discounts actually allowed and taken; excise,
value-added, and sales taxes actually paid by LICENSEE for Products; and
shipping and handling and shipping insurance charges actually paid by
LICENSEE for Products. (Note that amounts not actually received, such as
bad debts left unpaid to LICENSEE, are not included in Net Sales.)
2.9 "Parties" in singular or plural usage as required by the context means
LICENSEE and/or MICHIGAN.
2.10 "Product(s)" means any product (s) (including any service or process to be
performed for customers) whose manufacture, use or sale (or performance)
in any country would, but
2
Confidential materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
for this Agreement, comprise an infringement, including contributory
infringement, of one or more Valid Claims.
2.11 "Royalty Quarter(s)" means the three-month periods ending on the last day
of March, June, September and December of each year.
2.12 "Sublicensee(s)" means any person or entity, except an Affiliate,
sublicensed by LICENSEE under this Agreement to make, have made, use,
market, sell, lease, or offer for sale, in the Territory, Products
designed and marketed for use in a Field of Use.
2.13 "TECHNOLOGY" as used in this Agreement means all information,
manufacturing techniques, data, designs or concepts (whether or not
publicly known or available) covering:
(1) [**] developed by MICHIGAN's employees Wai ▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇. ▇▇▇▇▇▇,
▇▇▇ ▇. ▇▇▇▇▇▇, and ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ as described in MICHIGAN's
Technology Management office Files No. [**] and [**] entitled,
respectively, [**], encompassing Provisional U.S. Patent Applications
Serial No. [**] and Serial No. [**] entitled, respectively, [**] both
filed on, [**]; and
(2) [**] developed by MICHIGAN-s employees ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, ▇▇▇ ▇.
▇▇▇▇▇▇ and ▇▇▇▇▇ ▇. ▇▇▇▇▇▇, as described in MICHIGAN's Technology
management office File No. [**] entitled [**] and encompassing
Provisional U.S. Patent Application Serial No. [**] of same title
filed on [**]; and
(3) [**] developed by MICHIGAN's employees ▇▇▇▇▇ ▇. ▇▇▇▇▇▇, Leatrese ▇.
▇▇▇▇▇▇, and ▇▇▇▇▇▇ ▇▇▇▇ as described in MICHIGAN's Technology
Management Office File No. [**] entitled [**] and encompassing
Provisional U.S. Patent Application Serial No. [**] entitled [**] and
filed on [**];
(4) the technologies specified in subparagraphs 2.13(l) and 2.13(2) as
described and claimed in a patent application filed pursuant to the
Patent Cooperation Treaty on [**], Serial No. PCT/US[**], entitled
[**].
(5) all inventions and discoveries in which MICHIGAN acquires ownership
pursuant to Article 9 below.
2.14 "Territory" means all countries of the world.
2.15 "Valid Claim(s)" means any claim(s) in an unexpired patent or pending in a
patent application included within the Licensed Patents excepting only
claims that:
(1) a court or other governmental agency of competent jurisdiction has
decided are unenforceable, unpatentable, or invalid, unappealable or
unappealed within the time allowed for appeal; or
(2) a reissue or disclaimer has rendered invalid or unenforceable. If in
any country two or more such decisions conflict with respect to the
validity of the same claim,
3
Confidential materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
the decision of the higher or highest tribunal controls; however, if
the tribunals are of equal rank, then the decision or decisions
upholding the claim prevails when the conflicting decisions are equal
in number, and the majority of decisions prevails when the conflicting
decisions are unequal in number.
3. GRANT OF LICENSE.
3.1 MICHIGAN hereby grants to LICENSEE the exclusive license under the
Licensed Patents to make, have made, use, market, lease, offer for sale
and sell, in the Territory, Products designed and marketed solely for use
in any Field of Use; with the right to grant sublicenses to Affiliates and
Sublicensees subject to the terms and provisions of Article 8 below.
3.2 LICENSEE may maintain periodic communication with MICHIGAN to identify
intellectual property related to the TECHNOLOGY developed by or under the
direction of MICHIGAN's faculty member Dr. ▇▇▇▇▇ ▇▇▇▇▇▇, for possible
licensing in fields in which LICENSEE is making a current, significant
commitment. Upon request of LICENSEE (and provided no conflict with any
then-existing agreements or commitments regarding those technologies would
result), MICHIGAN will participate in good faith discussions with LICENSEE
regarding license rights to any such technologies (although LICENSEE
acknowledges that its right to good-faith discussions may not be exercised
to exclude other potential licensees from discussions with MICHIGAN).
3.3 MICHIGAN reserves the right to practice the Technology and the Licensed
Patents solely for research and education purposes.
3.4 MICHIGAN further reserves the right, as 37CFR401.14(b) requires, to grant
to the U.S. Government a non-exclusive, nontransferable, irrevocable,
paid-up license or licenses to practice or have practiced for or on behalf
of the United States all patent applications and resulting patents
included in the TECHNOLOGY and the Licensed Patents, if agreements between
MICHIGAN and the U.S. Government covering funded research relating to the
TECHNOLOGY or the Licensed Patents so require.
4. CONSIDERATION.
4.1 LICENSEE shall pay to MICHIGAN a one-time license issue fee of [**]
dollars ($[**]).
4.2 LICENSEE shall also pay to MICHIGAN, with respect to each Royalty Quarter,
a royalty equal to [**] percent ([**]%) of Net Sales of LICENSEE and
Affiliate(s) for all Products.
Reduction of royalties: The royalties payable under Paragraph 4.2 above
may be reduced by LICENSEE via the following methods:
Method A: In circumstances where LICENSEE or Affiliates generate Net Sales
due to the sale of combination products (being a Product sold in
combination with a discrete system, device, item of equipment or apparatus
which is not itself a Product), royalties may be calculated only on that
portion of the overall Net Sales which is left after
4
Confidential materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
subtracting the fair market sales price of the discrete system, device,
item of equipment or apparatus which is not itself a Product (provided
that, where such Products are also sold separately, the resultant royalty
shall not be less than if the Product had been sold separately);
Method B: In circumstances where LICENSEE is required to make payments to
one or more third parties in consideration for license rights to patents
or technology necessary to make Products (excluding the discrete
components of combination products), LICENSEE may deduct [**] percent
([**]%) of such payments from the royalties otherwise payable to MICHIGAN.
Limitation: Where LICENSEE applies either Method A or Method B, the
royalties payable for the Products so affected shall not be reduced by
more than [**] ([**]%) of the royalty that would otherwise have been
payable. Where LICENSEE applies both Method A and Method B to the same
unit of Product, the royalties payable for the Products so affected shall
not be reduced by more than [**] ([**]%) of the royalty that would
otherwise have been payable.
Method C: In circumstances where LICENSEE or Affiliates expect to sell
Product(s), directly and in volume, to a horizontal market in which then
ongoing sales of non-infringing substitute products would materially limit
the profit margin on sales of Product(s), and LICENSEE or Affiliates
reasonably demonstrate to MICHIGAN that such market conditions prevail,
then the Parties agree to meet in advance of such sales and discuss an
appropriate royalty rate for such Products more accurately reflecting a
share of the expected profit margin. This negotiated rate shall be applied
in lieu of the application of Method A or B above to such Net Sales.
4.3 LICENSEE shall also pay MICHIGAN, with respect to each Royalty Quarter, a
royalty equal to (a) [**] percent ([**]%) of Gross Sublicensing Revenues
if only rights to Licensed Patents are sublicensed; or (b) [**] ([**]%) of
Gross Sublicensing Revenues if the Gross Sublicensing Revenues includes
revenue received for Licensed Patent rights sublicensed in conjunction
with final end use products developed by LICENSEE and/or substantial
technology developed by LICENSEE.
4.4 This Agreement imposes the obligation to pay MICHIGAN a royalty under this
Article 4 only once for the same unit of Product regardless of the number
of Valid Claims or Licensed Patents covering the same; however, to
determine payments due, whenever the term "Product" applies to a property
during various stages of manufacture,. use or sale (including interim
sales among LICENSEE and its Affiliates where final sales to customers are
made), then Net Sales equals the amount derived from the sale,
distribution or use of such Product by LICENSEE or Affiliates at the stage
of its highest invoiced value to unrelated third parties.
4.5 LICENSEE shall pay to MICHIGAN an annual license maintenance fee. This
annual fee accrues in the Royalty Quarter ending in March of the years
specified below. LICENSEE may credit in full each annual fee actually paid
to MICHIGAN against all royalties (as set forth in Paragraph 4.2 above)
otherwise due MICHIGAN for the calendar
5
Confidential materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
year in which LICENSEE pays the specific annual fee. The year for which
LICENSEE may take credits against royalties includes the Royalty Quarter
in which the annual fee accrues and the next three Royalty Quarters.
The annual license maintenance fees are as follows:
(1) In 1997: $[**];
(2) In 1998: $[**];
(3) In 1999: $[**];
(4) In 2000: $[**];
(5) In 2001: $[**];
(6) In 2002: $[**];
(7) In 2003: $[**];
(8) In 2004: $[**];
(9) In 2005 and in each year thereafter during the term of this
Agreement: $[**].
Also, notwithstanding (1-9) above (and in place of the amounts therein
listed, when applicable):
(10) In the calendar year following the first year in which. LICENSEE
first obtains any required governmental approval or license in the
United States, Japan, or any European Union nation, to market any
product for any therapeutic purpose as a drug, device or biologic,
either alone or in combination with other substances: $[**];
(11) In the year next succeeding the year defined in (10); $[**];
(12) In the year next succeeding the year defined in (11).; $[**];
(13) In the year next succeeding the year defined in (12) and in each
succeeding calendar year thereafter during the term of this
Agreement; $[**].
Also, notwithstanding (1-13) above (and in place of the amounts therein
listed, when applicable):
(14) In each of the first and second years following the First Commercial
Sale: $[**].
(15) In the third year following the First Commercial Sale: $[**].
(16) In the fourth year following the First Commercial Sale, and in each
succeeding calendar year thereafter during the term of this
Agreement: $[**].
6
Confidential materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
Also, notwithstanding (1-16) above (and in addition to any amounts therein
listed):
(17) In each of the first and second years following the First Commercial
Reagent Sale: $[**].
(18) In the third year following the First Commercial Reagent Sale: $[**].
(19) In the fourth year following the First Commercial Reagent Sale, and
in each year thereafter during the term of this Agreement: $[**].
4.6 Except as provided in the definition of Net Sales, all royalty payments to
MICHIGAN under this Agreement are without deduction for sales, use,
excise, personal property or other similar taxes or other duties imposed
on such payments by the government of any country or any political
subdivision thereof; and LICENSEE shall assume and pay any such taxes;
except that LICENSEE may deduct from royalty payments taxes levied upon
the export of royalties by a government other than the U.S., and required
to be withheld and paid on MICHIGAN's behalf by LICENSEE (LICENSEE shall
cooperate in establishing MICHIGAN's exemption from such taxes where
appropriate).
4.7 In the event that the patents that ultimately issue among the Licensed
Patents contain only claims that are substantially narrower than the
claims of the patent applications that are within the Licensed Patents as
of the Effective Date (that is, if prosecution of the Licensed Patents
finally results in unexpectedly severe restriction of the coverage of the
claims), to the competitive detriment of LICENSEE, then MICHIGAN agrees to
discuss the possibility of renegotiating the royalty rate and other
financial terms applicable to the affected Product. Any such financial
relief will be on a country-by-country basis and may be temporary or
permanent depending upon the circumstances. The Parties acknowledge and
agree that MICHIGAN is under no legal obligation to alter the financial
terms set forth in this Article 4, but MICHIGAN is under an obligation to
enter into discussions with LICENSEE for a reasonable period of time.
5. REPORTS.
5.1 Annually, until the first to occur of the First Commercial Sale or First
Commercial Reagent Sale, and thereafter within sixty (60) days after each
Royalty Quarter closes (including the close of any Royalty Quarter
immediately following any termination of this Agreement), LICENSEE shall
report to MICHIGAN for that Royalty Quarter:
(1) all royalties accruing to MICHIGAN; and
(2) the gross sales and Net Sales of Products by LICENSEE and Affiliates,
and
(3) the source and amount of all Gross Sublicensing Revenues (including,
where such information is provided to LICENSEE or Affiliates, the
gross sales and net sales of Products by Sublicensees), and
7
(4) any other revenues for which payments are due, and the amount of such
payments, and the various calculations used to arrive at those
amounts, including the quantity, description (nomenclature and type
designation), country of manufacture and country of sale of Products.
If no payment is due, LICENSEE shall so report.
5.2 LICENSEE covenants that it will promptly establish and consistently employ
a system of specific nomenclature and type designations for Products to
permit identification and segregation of various types where necessary;
LICENSEE, Affiliates and Sublicensees shall consistently employ the system
when rendering invoices thereon and shall inform MICHIGAN, or its
auditors, when requested, as to the details concerning such nomenclature
system as well as to all additions thereto and changes therein.
5.3 LICENSEE shall keep, and shall require its Affiliates and Sublicensees to
keep, true and accurate records and books of account containing data
reasonably required for the computation and verification of payments due
as provided by this Agreement. LICENSEE shall:
(1) open such books and records for inspection upon reasonable notice
during business hours by either MICHIGAN auditor(s) or an independent
certified accountant selected by MICHIGAN, for the purpose of
verifying the amount of payments due and payable;
(2) retain such books and records for six (6) years from date of
origination.
These rights of inspection survive any termination of this Agreement.
MICHIGAN is responsible for all expenses of such inspection, except that
if any inspection reveals an underpayment greater than ten percent (10%)
of royalties due MICHIGAN, then LICENSEE shall pay all expenses of that
inspection and the amount of the underpayment immediately to MICHIGAN.
MICHIGAN may exercise its rights of inspection under this Paragraph no
more frequently than once in any twelve (12) month period and shall
perform such rights of inspection in a manner to minimize unreasonable
interference with LICENSEE's business operations. The MICHIGAN auditor(s)
or the independent certified accountant selected by MICHIGAN shall not
disclose to MICHIGAN any information other than information relating to
(and information necessary for the proof of) accuracy of reports and
payments delivered under this Agreement. The confidentiality of such books
and records shall be protected in accordance with Article 30.
5.4 LICENSEE shall direct its authorized representative to certify that
reports required hereunder are correct to the best of LICENSEE's knowledge
and information.
6. TIMES AND CURRENCIES OF PAYMENTS.
6.1 Payments accrued during each Royalty Quarter are due and payable in Ann
Arbor, Michigan on the date each quarterly report is due (as provided in
Paragraph 5.1).
8
Confidential materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
LICENSEE shall include such payments, in United States dollars, with the
report. LICENSEE agrees to make all payments due hereunder to MICHIGAN by
check made payable to "The Regents of The University of Michigan," and
sent to MICHIGAN according to the provisions for notices set forth in
Article 21 herein.
6.2 On all amounts outstanding and payable to MICHIGAN, interest accrues from
the date the amount is due at [**] above, the prime lending rate as
established by the Chase Manhattan Bank, N.A., in New York City, New York,
or at a lower rate if required by law.
6.3 For each Royalty Quarter, LICENSEE and Affiliates shall convert any Net
Sales or Gross Sublicensing Revenues they receive in foreign currency into
its equivalent in United States dollars at the exchange rate of the
currency as reported (or if erroneously reported, as subsequently
corrected) in the Wall Street Journal on the last business day of the
Royalty Quarter (or if not reported on that date, as quoted by the Chase
Manhattan Bank, N.A., in New York City, New York).
6.4 Except as provided in the definition of Net Sales, all royalty payments to
MICHIGAN under this Agreement are without deduction for sales, use,
excise, personal property or other similar taxes or other duties imposed
on such payments by the government of any country or any political
subdivision thereof; and LICENSEE shall assume and pay any such taxes.
7. COMMERCIALIZATION.
7.1 LICENSEE assumes full responsibility to do all that is necessary to:
(1) obtain any governmental approvals to manufacture or to sell Products;
(2) comply with all laws and regulations with respect to Products; and
(3) ensure the safe production, storage, handling, transport, packaging
and distribution of Products.
7.2 LICENSEE agrees to use its best efforts to develop Products, obtain any
government approvals necessary, and manufacture and sell Products at the
earliest possible date; and effectively to exploit, market and manufacture
in sufficient quantities to meet anticipated customer demand and to make
the benefits of the Products reasonably available to the public.
7.3 LICENSEE agrees to manufacture or have manufactured all Products
substantially in the United States. If U.S. manufacture is not practically
feasible, then MICHIGAN shall cooperate with LICENSEE in obtaining waivers
of this requirement from the U.S. Government.
7.4 LICENSEE shall use its best efforts to alert all potential customers and
distributees that Products are not intended for any therapeutic or
clinical diagnostic uses unless properly approved therefor pursuant to
7.1.
9
7.5 Within fifteen (15) days of the First Commercial Reagent Sale, and also
within fifteen (15) of the First Commercial Sale, LICENSEE shall report by
written letter to MICHIGAN the date and general terms of such sale.
8. SUBLICENSING.
8.1 LICENSEE has the exclusive right to grant sublicenses to its rights under
Article 3 above to Affiliates and Sublicensees, to make, have made, use,
market, lease, offer for sale and sell, Products in the Territory.
8.2 LICENSEE shall notify MICHIGAN of every sublicense agreement and each
amendment thereto, within thirty (30) days after their execution, and
indicate the name of the Sublicensee or Affiliate, the territory of the
sublicense, the scope of the sublicense, and the nature, timing and
amounts of all fees and royalties to be paid thereunder.
8.3 LICENSEE shall include in any sublicense granted under this Article 8 a
provision that the sublicense terminates upon any termination of this
Agreement.
8.4 LICENSEE shall require that all sublicenses:
(1) be consistent with the terms and conditions of this Agreement;
(2) contain the Sublicensee's or Affiliate's acknowledgments of
MICHIGAN's rights in the TECHNOLOGY and Licensed Patents, and the
disclaimer of warranty and limitation on MICHIGAN's liability, as
provided by Article 12 below.
(3) contain provisions under which the Sublicensee or Affiliate accepts
duties at least equivalent to those accepted by the LICENSEE in the
following paragraphs:
5.3 duty to keep records
12.4 duty to avoid improper representations or responsibilities
13.1 duty to defend, hold harmless, and indemnify MICHIGAN
13.3 duty to maintain insurance
17 duty to control exports
19 duty to restrict the use of MICHIGAN's name
20 duty to properly ▇▇▇▇ product with Patent notices
8.5 LICENSEE shall require that all sublicenses contain a provision obligating
each Sublicensee or Affiliate to pay taxes due, if any, in the same manner
as set out in Paragraph 6.4 above or, should the sublicense be assigned to
MICHIGAN, to make the Sublicensee or Affiliate responsible for such taxes.
8.6 LICENSEE shall require that all sublicenses contain the right for LICENSEE
to assign its rights under the sublicense to MICHIGAN.
9. OWNERSHIP OF INTELLECTUAL PROPERTY.
10
9.1 LICENSEE acknowledges MICHIGAN's ownership interest in all Licensed
Patents as defined in Paragraph 2.7(l) above.
9.2 LICENSEE might engage MICHIGAN employees as employees or consultants to
LICENSEE or Affiliates during the time of their employment with MICHIGAN.
LICENSEE and MICHIGAN hereby agree that the following provisions govern
the rights to any inventions, discoveries or computer software that
represent improvements upon the Licensed Patents or otherwise relate to
the TECHNOLOGY whether or not patentable, which any MICHIGAN employee
conceives, reduces to practice or develops while concurrently employed by
LICENSEE or Affiliates during the term of his or her employment with
MICHIGAN and the term of this Agreement:
(1) Where MICHIGAN employees concurrently employed by LICENSEE or
Affiliates, in combination with other LICENSEE or Affiliate employees
not concurrently employed by MICHIGAN, constitute the group of
inventors/developers, MICHIGAN and LICENSEE are joint owners of such
inventions, discoveries and/or computer software, and MICHIGAN and
LICENSEE shall require that any resulting patent rights and
copyrights be assigned jointly to MICHIGAN and LICENSEE;
(2) Where MICHIGAN employees concurrently employed by LICENSEE or
Affiliates constitute part or all of the group of
inventors/developers, and no LICENSEE or Affiliate employees not
concurrently employed by MICHIGAN constitute any part of the group of
inventors/developers, LICENSEE shall grant MICHIGAN sole ownership
(as between MICHIGAN and LICENSEE) of such inventions, discoveries
and/or computer software, and MICHIGAN and LICENSEE shall require
that any resulting patent rights and copyrights be assigned solely to
MICHIGAN.
9.3 Where not precluded by or otherwise conflicting with MICHIGAN's
then-existing agreements with any third parties, the definition of
TECHNOLOGY in Paragraph 2.13 above encompasses inventions, discoveries
and/or computer software included under Subparagraph 9.2(1) or (2) above
and conceived, reduced to practice or developed during the performance of
duties as employee or consultant to LICENSEE, and the definition of
Licensed Patents in Paragraph 2.7 above encompasses any resulting patent
rights.
10. PATENT APPLICATIONS AND MAINTENANCE.
10.1 MICHIGAN will control all aspects of filing, prosecuting, and maintaining
Licensed Patents, including foreign filings and Patent Cooperation Treaty
filings. LICENSEE shall, at its own expense, perform all actions and
execute or cause to be executed all documents necessary to support such
filing, prosecution, or maintenance.
10.2 MICHIGAN shall notify LICENSEE of all information received by MICHIGAN
relating to the filing, prosecution and maintenance of Licensed Patents,
including any lapse, revocation, surrender, invalidation or abandonment of
any of the Licensed Patents, in
11
sufficient time to allow, where possible, LICENSEE to review and comment
upon such information.
10.3 MICHIGAN may in its sole discretion decide to refrain from or to cease
prosecuting or maintaining any of the Licensed Patents, including any
foreign filing or any Patent Cooperation Treaty filing. If MICHIGAN makes
any such decision, MICHIGAN shall notify LICENSEE promptly and in
sufficient time to permit LICENSEE at its sole discretion to continue such
prosecution or maintenance at LICENSEE's expense. If LICENSEE elects to
continue such prosecution or maintenance, MICHIGAN shall execute such
documents and perform such acts at LICENSEE's expense as may be reasonably
necessary for LICENSEE so to continue such prosecution or maintenance.
10.4 LICENSEE shall reimburse patent expenses paid by MICHIGAN as follows:
MICHIGAN shall provide notice to LICENSEE of all reasonable and necessary
expenses paid by MICHIGAN in monitoring, drafting, filing, prosecuting and
maintaining the Licensed Patents, and in maintaining or asserting its
inventorship or ownership interest in Licensed Patent(s), including
without limitation fees paid to outside counsel or consultants; patent
office fees for filing, prosecution, reissue, reexamination and issue;
maintenance fees; fees for foreign filings and Patent Cooperation Treaty
filings; and reasonable travel expenses incurred by MICHIGAN employees for
the purpose of monitoring, prosecuting and maintaining the Licensed
Patents, but not including any part of any MICHIGAN employee's salary.
MICHIGAN will include in the first such notice of such expenses all
expenses that MICHIGAN has incurred to date with respect to all Licensed
Patents that LICENSEE has not otherwise already reimbursed. Within thirty
(30) days of the receipt of each such notice, LICENSEE shall reimburse
MICHIGAN for all such reasonable and necessary expenses, except that
MICHIGAN will not require LICENSEE to reimburse expenses incurred through
foreign filings or Patent Cooperation Treaty filings, unless LICENSEE has
requested such filings; however, in any case where LICENSEE fails to
reimburse MICHIGAN promptly for any above-described expenses (whether or
not related to filings requested by LICENSEE), the definitions of
"TECHNOLOGY" and "Licensed Patents" herein shall not include any patent
applications or resulting patents to which such unreimbursed expenses
relate.
11. INFRINGEMENT.
11.1 LICENSEE and MICHIGAN shall each inform the other promptly in writing of
any alleged infringement of the Licensed Patents in any Field of Use by a
third party and of any available evidence thereof.
11.2 During the term of this Agreement, LICENSEE has the first option to police
the Licensed Patents and Products against infringement by other parties
within the Territory and the Fields of Use. This right to police includes
defending any action for declaratory judgment of non-infringement or
invalidity; and prosecuting, defending or settling all infringement and
declaratory judgment actions at its expense and through counsel of its
selection, except that LICENSEE shall make any such settlement only with
the advice and consent of MICHIGAN, which consent shall not be
unreasonably withheld. MICHIGAN shall provide reasonable assistance to
LICENSEE with respect to such
12
actions, but only if LICENSEE reimburses MICHIGAN for out-of-pocket
expenses incurred in connection with any such assistance rendered at
LICENSEE's request or reasonably required by MICHIGAN. If LICENSEE elects
to institute any such action or suit, MICHIGAN agrees to be named as a
nominal party therein. MICHIGAN retains the right to participate, with
counsel of its own choosing and at its own expense, in any action under
this Paragraph 11.2.
11.3 If LICENSEE institutes an action for infringement of a Licensed Patent or
defends a declaratory judgment or other action with respect to a Licensed
Patent, then during the pendency of such litigation LICENSEE may withhold
up to fifty percent (50%) of the payments otherwise thereafter due
MICHIGAN under Paragraphs 4.2 and 4.3 above, applying that withholding
towards reimbursement of no more than one-half (1/2) of LICENSEE's actual
outside attorney fees and other direct, out-of-pocket litigation expenses
(not to include any compensation paid to employees of LICENSEE or
Affiliates). Any resulting settlement payments or damages awarded and
received by LICENSEE shall be applied equally toward reimbursement of
MICHIGAN's withheld royalties pursuant to this Paragraph and to LICENSEE's
out-of-pocket expenses which were not reimbursed; of the remainder, if
any, LICENSEE shall pay forty percent (40%) to MICHIGAN.
If LICENSEE has paid or pays an annual fee to MICHIGAN under Paragraph 4.5
in the same year LICENSEE receives a payment or award as set out above,
then LICENSEE may credit that annual fee against the share of the payment
or award (after recovery of expenses and withheld royalties) otherwise due
to MICHIGAN, exactly as if that share represented additional royalties due
from LICENSEE.
11.4 If LICENSEE fails to take action to ▇▇▇▇▇ any alleged infringement of a
Licensed Patent within sixty (60) days of a request by MICHIGAN to do so
(or within a shorter period if required to preserve the legal rights of
MICHIGAN under the laws of any relevant government or political
subdivision thereof), then MICHIGAN has the right to take such action
(including prosecution of a suit) at its expense and LICENSEE shall use
reasonable efforts to cooperate in such action, at LICENSEE's expense. If
MICHIGAN elects to institute any such action or suit, LICENSEE agrees to
be named as a nominal party therein. MICHIGAN has full authority to settle
on such terms as MICHIGAN shall determine, except that MICHIGAN shall not
reach any settlement whereby it licenses a third party under any Licensed
Patents in the Territory and any Field of Use without the consent of
LICENSEE, which consent LICENSEE can withhold for any reason. After
recovery of all of MICHIGAN's out-of-pocket litigation expenses, and after
payment to LICENSEE (such payment not to exceed the recovery or settlement
amounts actually received by MICHIGAN) of any unrecovered expenses paid by
LICENSEE at MICHIGAN's request to third parties in furtherance of such
action, MICHIGAN shall pay twenty percent (20%) of any remainder of any
recovery or settlement to LICENSEE.
11.5 If LICENSEE initiates any legal action, or learns of a legal action
initiated by any third party concerning any alleged infringement or
non-infringement, or discovers any allegation by a third party of
infringement resulting from the practice of Licensed Patents, then
LICENSEE shall so notify MICHIGAN promptly in a detailed writing. LICENSEE
13
shall promptly keep MICHIGAN informed and provide copies to MICHIGAN of
all documents regarding all such proceedings or actions instituted by
LICENSEE.
12. NO WARRANTIES; LIMITATION ON MICHIGAN'S LIABILITY.
12.1 MICHIGAN, including its Regents, fellows, officers, employees and agents,
make no representations or warranties that any Licensed Patent is or will
be held valid, or that the manufacture, use, sale or other distribution of
any Products will not infringe upon any patent or other rights not vested
in MICHIGAN.
MICHIGAN represents that:
(1) to its knowledge it has the lawful right to enter into this Agreement
and grant the rights herein granted; and
(2) the claims included within the patent applications which comprise the
Licensed Patents have been included in good faith and without
fraudulent intent by MICHIGAN.
12.2 MICHIGAN, INCLUDING ITS REGENTS, FELLOWS, OFFICERS, EMPLOYEES AND AGENTS,
MAKES NO REPRESENTATIONS, EXTENDS NO WARRANTIES OF ANY KIND, EITHER
EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO THE IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, AND ASSUMES NO
RESPONSIBILITIES WHATEVER WITH RESPECT TO DESIGN, DEVELOPMENT,
MANUFACTURE, USE, SALE OR OTHER DISPOSITION BY LICENSEE, AFFILIATES OR
SUBLICENSEES OF PRODUCTS.
12.3 THE ENTIRE RISK AS TO PERFORMANCE OF PRODUCTS IS ASSUMED BY LICENSEE,
AFFILIATES AND SUBLICENSEES. In no event will MICHIGAN, including its
Regents, fellows, officers, employees and agents, be responsible or liable
for any direct, indirect, special, incidental, or consequential damages or
lost profits or other economic loss or damage regarding Products, to
LICENSEE, Affiliates, Sublicensees or any other individual or entity
regardless of legal theory. The above limitations on liability apply even
though MICHIGAN, its Regents, fellows, officers, employees or agents may
have been advised of the possibility of such damage.
12.4 LICENSEE shall not, and shall require that its Affiliates and Sublicensees
do not, make any statements, representations or warranties whatsoever to
any person or entity, or accept any liabilities or responsibilities
whatsoever from any person or entity, that are inconsistent with any
disclaimer or limitation included in this Article 12.
13. INDEMNITY; INSURANCE.
13.1 LICENSEE shall defend, indemnify and hold harmless and shall require its
Affiliates and Sublicensees to defend, indemnify and hold harmless
MICHIGAN, its Regents, fellows, officers, employees and agents
("Indemnitees"), for and against any claims, demands, damages, losses, and
expenses of any nature (including reasonable attorneys, fees and
14
other litigation expenses), resulting from, but not limited to, death,
personal injury, illness, property damage, economic loss or products
liability arising from any of the following:
(1) Any manufacture, use, sale or other disposition by LICENSEE,
Affiliates, Sublicensees or transferees of Products;
(2) The direct or indirect use by any person of Products made, used, sold
or otherwise distributed by LICENSEE, Affiliates or Sublicensees;
(3) The use by LICENSEE, Affiliates or Sublicensees of any invention or
computer software related to the TECHNOLOGY or the Licensed Patents.
The indemnification required above shall not apply to any liability,
damage, loss or expense to the extent that it is directly attributable to
(1) the grossly negligent or intentional misconduct of the Indemnitees, or
(2) damages incurred by patients of MICHIGAN due to the negligent
administration to them, by MICHIGAN, of Products supplied by LICENSEE.
13.2 MICHIGAN may participate at its option and expense through counsel of its
own selection, and may join in any legal actions related to any such
claims, demands, damages, losses and expenses under Paragraph 13.1 above.
13.3 Before any distribution of any Product by LICENSEE or an Affiliate,
LICENSEE shall purchase and maintain in effect a policy of product
liability insurance. Before any distribution of any Product by a
Sublicensee, LICENSEE shall require that the Sublicensee purchase and
maintain in effect a policy of product liability insurance. Each such
insurance policy will provide reasonable coverage for all claims with
respect to any Products manufactured, sold, licensed or otherwise
distributed by LICENSEE and Affiliates -- or, in the case of a
Sublicensee's policy, by the Sublicensee -- and will specify MICHIGAN,
including its Regents, fellows, officers and employees, as an additional
insured. LICENSEE shall furnish certificate(s) of such insurance to
MICHIGAN, upon request.
14. TERM AND TERMINATION.
14.1 Upon any termination of this Agreement, and except as provided herein to
the contrary, all rights and obligations of the Parties hereunder cease,
except as follows:
(1) Obligations to pay royalties and other sums accruing hereunder up to
the day of such termination;
(2) MICHIGAN's rights to inspect books and records as described in
Article 5, and LICENSEE's obligations to keep such records for the
required time;
(3) Obligations to hold harmless, defend and indemnify MICHIGAN under
Article 13;
15
(4) Any cause of action or claim of LICENSEE or MICHIGAN accrued or to
accrue because of any breach or default by the other Party hereunder;
(5) The general rights, obligations, and understandings of Articles 2,
12, 17, 19, 20, 28 and 29; and
(6) All other terms, provisions, representations, rights and obligations
contained in this Agreement that by their sense and context are
intended to survive until performance thereof by either or both
Parties.
14.2 This Agreement will become effective on its Effective Date and, unless
terminated under another, specific provision of this Agreement, will
remain in effect until and terminate upon the last to expire of the
Licensed Patents.
14.3 If LICENSEE at any time defaults in the payment of any fee or royalty or
the making of any report hereunder, or makes any false report, or if
either Party commits any material breach of any covenant or promise herein
contained, and fails to remedy any such default, breach or report within
thirty (30) days after written notice thereof by the other Party
specifying such default, then that other Party may, at its option,
terminate this Agreement and the license rights granted herein by notice
in writing to such effect. Any such termination is without prejudice to
either Party's other legal rights for breach of this Agreement.
14.4 LICENSEE may terminate this Agreement by giving MICHIGAN a notice of
termination, which must include a statement of the reasons, whatever they
may be, for such termination and the termination date established by
LICENSEE, which date must not be sooner than ninety (90) days after the
date of the notice. The Parties shall deem such notice to be final and,
immediately upon receipt, of such notice of termination, MICHIGAN will
have the right to enter into agreements with others for the manufacture,
sale, and/or use of Products.
15. ASSIGNMENT.
Due to the unique relationship between the Parties, this Agreement is not
assignable by either Party without the prior written consent of the other
Party. Any attempt to assign this Agreement without such consent is void
from the beginning. MICHIGAN shall provide such consent in connection with
an assignment related to a change in the name or legal status of LICENSEE
that does not affect its assets and the nature of its business activities,
and MICHIGAN shal1 not unreasonably withhold consent for LICENSEE to
assign this Agreement to a purchaser of all or substantially all of
LICENSEE's business. No assignment is effective until the intended
assignee agrees in writing to accept all the terms and conditions of this
Agreement.
16. REGISTRATION AND RECORDATION.
16.1 If the terms of this Agreement, or the terms of any assignment or license
under this Agreement, are or become such as to require that the Agreement
or license or any part thereof be registered with or reported to a
national or supranational agency of any area in
16
which LICENSEE, Affiliates or Sublicensees would do business, LICENSEE
shall, at its expense, undertake such registration or report, and promptly
supply to MICHIGAN notice and appropriate verification of the act of
registration or report or any agency ruling resulting from it.
16.2 LICENSEE shall also carry out, at its expense, any formal recordation of
this Agreement or any license herein granted that the law of any country
requires as a prerequisite to enforceability of the Agreement or license
in the courts of any such country or for other reasons, and shall promptly
furnish to MICHIGAN appropriately verified proof of recordation.
17. LAWS AND REGULATIONS OF THE UNITED STATES; EXPORT.
17.1 This Agreement is subject to all United States laws and regulations now or
hereafter applicable to the subject matter of this Agreement.
17.2 LICENSEE shall comply, and shall require its Affiliates and Sublicensees
to comply, with all provisions of any applicable laws, regulations, rules
and orders relating to the license herein granted and to the testing,
production, transportation, export, packaging, labeling, sale or use of
Products, or otherwise applicable to LICENSEE's or its Affiliates' or
Sublicensees' activities hereunder. LICENSEE shall obtain, and shall
require its Affiliates and Sublicensees to obtain, such written assurances
regarding export and re-export of technical data (including Products made
by use of technical data) as the Office of Export Administration
Regulations may require, and LICENSEE hereby gives such written assurances
as may be required under those Regulations to MICHIGAN.
18. BANKRUPTCY.
18.1 If during the term of this Agreement, LICENSEE makes an assignment for the
benefit of creditors, or if proceedings in voluntary or involuntary
bankruptcy are instituted on behalf of or against LICENSEE, or if a
receiver or trustee is appointed for the property of LICENSEE, MICHIGAN
may, at its option, terminate this Agreement and revoke the license herein
granted by written notice to LICENSEE.
19. USE OF MICHIGAN'S NAME.
LICENSEE agrees to refrain from using and to require Affiliates and
Sublicensees to refrain from using the name of MICHIGAN in publicity or
advertising without the prior written approval of MICHIGAN. Reports in
scientific literature and presentations of joint research and development
work are not considered publicity.
20. PRODUCT MARKING.
To the extent commercially feasible and consistent with prevailing
business practices, LICENSEE shall ▇▇▇▇, and shall cause its Affiliates
and Sublicensees to ▇▇▇▇, all Products that are manufactured or sold under
this Agreement with the number of each issued patent under the Licensed
Patents that applies to such Product.
17
21. NOTICES.
Any notice, request, report or payment required or permitted to be given
or made under this Agreement by either Party will be given by sending such
notice by certified or registered mail, return receipt requested, to the
address set forth below or such other address as such Party specifies by
written notice given in conformity herewith. Any notice not so given is
not valid until received, and any notice given according to the provisions
of this Paragraph is effective when mailed.
To MICHIGAN: The University of Michigan
Technology Management Office
Wolverine Tower, Room 2071
▇▇▇▇ ▇. ▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Attn: File No. 1221
To LICENSEE: Reprogenesis, Inc.
▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇
▇▇. ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
22. INVALIDITY.
If a court of competent jurisdiction finds any term, provision, or
covenant of this Agreement invalid, illegal or unenforceable, that term
will be curtailed, limited or deleted, but only to the extent necessary to
remove the invalidity, illegality or unenforceability, and without in any
way affecting or impairing the remaining terms, provisions and covenants.
23. ENTIRE AGREEMENT AND AMENDMENTS.
This Agreement contains the entire understanding of the Parties concerning
the matter contained herein. The Parties may modify, vary or alter any of
the provisions of this Agreement for so long as it continues in force, but
only by an instrument duly executed by authorized officials of both
Parties hereto.
24. WAIVER.
No waiver by either Party of any breach of this Agreement, no matter how
long continuing or how often repeated, is a waiver of any subsequent
breach thereof, nor is any delay or omission by either Party in the
exercise of any right, power, or privilege hereunder a waiver of such
right, power or privilege.
25. ARTICLE HEADINGS.
The Article headings herein are for purposes of convenient reference only
and do not define or modify the terms written in the text of this
Agreement.
18
26. NO AGENCY RELATIONSHIP.
The relationship between the Parties is that of independent contractor and
contractee. Neither Party is an agent of the other regarding the exercise
of any rights hereunder, and neither has any right or authority to assume
or create any obligation or responsibility on behalf of the other.
27. FORCE MAJEURE.
Neither Party hereto is in default of any provision of this Agreement for
any failure in performance resulting from acts or events beyond the
reasonable control of such Party, such as Acts of God, acts of civil or
military authority, civil disturbance, war, strikes, fires, power
failures, natural catastrophes or other "force majeure" events.
28. GOVERNING LAW.
The law of the State of Michigan governs this Agreement and the
relationships between the Parties in all respects (notwithstanding any
provisions governing conflict of laws under such Michigan law to the
contrary), except that, for patents, the law of the country that grants
the patent determines questions affecting the construction and effect of
such patent.
29. JURISDICTION AND FORUM.
The Parties hereby consent to the jurisdiction of the courts of the State
of Michigan over any dispute concerning this Agreement or the relationship
between the Parties. Should LICENSEE bring any claim, demand or other
action against MICHIGAN, its Regents, fellows, officers, employees or
agents, arising out of this Agreement or the relationship between the
Parties, LICENSEE agrees to bring said action only in the Michigan Court
of Claims.
30. CONFIDENTIALITY.
30.1 Confidential Information that is disclosed in writing shall be marked with
a legend indicating its confidential status (such as "Confidential" or
"Proprietary"). Confidential Information that is disclosed orally or
visually shall be documented in a written notice prepared by the
Disclosing Party and delivered to the Receiving Party within thirty (30)
days of the date of disclosure; such notice shall summarize the
Confidential Information disclosed to the Receiving Party and reference
the time and place of disclosure.
30.2 For a period of five (5) years after disclosure of any portion of
Confidential Information, the Receiving Party shall (i) maintain such
Confidential Information in confidence, except that the Receiving Party
may disclose or permit the disclosure of any Confidential Information to
its Regents, fellows, directors, officers, employees, consultants and
advisors who are obligated to maintain the confidential nature of such
Confidential Information and who need to know such Confidential
Information for the purposes of this Agreement; (ii) use such Confidential
Information solely for the purposes of this Agreement (and for
administration of this Agreement and demonstration of compliance
19
or lack thereof with the terms herein); (iii) allow its Regents, fellows,
directors, officers, employees, consultants and advisors to reproduce the
Confidential Information only to the extent necessary for the
above-mentioned purposes, with all such reproductions being considered
Confidential Information.
30.3 The obligations of the Receiving Party under Paragraph 30.2 shall not
apply to the extent that the Receiving Party can demonstrate that certain
Confidential Information (i) was in the public domain prior to the time of
its disclosure under this Agreement; (ii) entered the public domain after
the time of its disclosure under this Agreement through means other than
an unauthorized disclosure resulting from an act or omission by the
Receiving Party; (iii) was independently developed or discovered by the
Receiving Party without use of the Confidential Information; (iv) is or
was disclosed to the Receiving Party at any time, whether prior to or
after the time of its disclosure under this Agreement, by a third party
having no fiduciary relationship with the Disclosing Party and having no
obligation of confidentiality with respect to such Confidential
Information; or (v) is required to be disclosed to comply with applicable
laws or regulations (including Michigan Freedom of Information Act
requirements), or with a court or administrative order, provided that the
Disclosing Party provides reasonable prior written notice of such
disclosure to the extent possible.
30.4 The Receiving Party acknowledges that the Disclosing Party (or any third
party entrusting its own information to the Disclosing Party) claims
ownership of its Confidential Information in the possession of the
Receiving Party. Upon the expiration or termination of this Agreement, and
at the request of the Disclosing Party, the Receiving Party shall return
to the Disclosing Party all originals, copies, and summaries of documents,
materials, and other tangible manifestations of Confidential Information
in the possession or control of the Receiving Party, except that the
Receiving Party may retain one copy of the Confidential Information in the
possession of its legal counsel solely for the purposes of monitoring all
of its and the other Party's obligations under this Agreement.
IN WITNESS WHEREOF, the Parties hereto have executed this Agreement in duplicate
originals by their duly authorized officers or representatives.
FOR THE REGENTS OF THE UNIVERSITY OF
FOR REPROGENESIS, INC. MICHIGAN
By /s/ By /s/
----------------------------------- ------------------------------------
(authorized representative) (authorized representative)
Typed Name____________________________ Typed Name____________________________
Title_________________________________ Title_________________________________
Date__________________________________ Date__________________________________
20
Confidential materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
APPENDIX A
Licensed Patents Filed as of Effective Date
1. U.S. Provisional Patent Application Serial No. [**], filed [**], entitled
[**], ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ and ▇▇▇▇▇▇ ▇▇▇▇, named inventors, and
assigned to the Regents of the University of Michigan.
2. Patent Cooperation Treaty Application Serial No. [**], filed [**],
designating all PCT member countries including the United States, entitled
[**], ▇▇▇▇▇ ▇▇▇▇▇▇ and ▇▇▇ ▇▇▇▇▇▇, named inventors, the Regents of the
University of Michigan, applicant.
21
Confidential materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
AMENDMENT TO LICENSE AGREEMENT
THIS AMENDMENT, effective as of the 1st day of August, 1999 (the EFFECTIVE
DATE), between Reprogenesis, Inc., a corporation incorporated in the State of
Texas, with offices located at ▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇, ▇▇. ▇▇▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇▇▇ ▇▇▇▇▇ ("LICENSEE") and the Regents of the University of Michigan, a
constitutional corporation of the State of Michigan, with offices located at
▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇ ("MICHIGAN").
LICENSEE and MICHIGAN agree as follows:
1. BACKGROUND
1.1 MICHIGAN and LICENSEE entered into a LICENSE AGREEMENT dated
November 30, 1997 covering certain TECHNOLOGY and LICENSED PATENTS
as therein defined.
1.2 MICHIGAN and LICENSEE entered into a ROUNDTABLE RESEARCH AGREEMENT
dated October 1, 1997. Pursuant to Article 8.1 therein, LICENSEE
timely exercised its option to negotiate for an exclusive,
royalty-bearing license to certain rights in University Intellectual
Property as defined in the ROUNDTABLE RESEARCH AGREEMENT.
1.3 MICHIGAN has developed ADDITIONAL TECHNOLOGY comprising methods and
means for delivering DNA from certain structural matrices developed
by MICHIGAN's staff members Drs. ▇. ▇▇▇▇▇▇, ▇. ▇▇▇▇ and ▇. ▇▇▇▇▇▇▇,
as described in Michigan's Technology Management Office File #[**]
entitled [**] (hereinafter defined as "ADDITIONAL TECHNOLOGY").
MICHIGAN acknowledges that ADDITIONAL TECHNOLOGY is within the
definition of University Intellectual Property. The ADDITIONAL
TECHNOLOGY is now the subject of an additional United States patent
application serial number [**] filed on [**] and a counterpart
Patent Cooperation Treaty application filed on even date
(hereinafter these and all other patent applications and patents
which cover an invention included in the ADDITIONAL TECHNOLOGY are
defined as "ADDITIONAL LICENSED PATENTS").
1.4 LICENSEE desires to obtain, and MICHIGAN, consistent with its
mission of education and research, desires to grant, a license to
the ADDITIONAL TECHNOLOGY and ADDITIONAL LICENSED PATENTS pursuant
to the aforementioned LICENSE AGREEMENT. To this end, and for the
benefit of both parties, MICHIGAN and LICENSEE agree to amend the
LICENSE AGREEMENT.
2. AMENDMENT
The term TECHNOLOGY includes the ADDITIONAL TECHNOLOGY, and the term
LICENSED PATENTS includes the ADDITIONAL LICENSED PATENTS. Solely with
respect to ADDITIONAL TECHNOLOGY and ADDITIONAL LICENSED PATENTS,
MICHIGAN's covenant under Paragraph 3.1 (LICENSE AGREEMENT) is limited as
follows:
Confidential materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
LICENSEE acknowledges, and agrees that all sublicenses of LICENSEE to
Affiliates and Sublicensees must include an acknowledgement by such
Affiliate or Sublicensee; that the non-infringing practice of ADDITIONAL
TECHNOLOGY and ADDITIONAL LICENSED PATENTS may require a license to
certain background rights of MICHIGAN licensed by MICHIGAN to [**].
3. ENTIRE AGREEMENT
The terms and conditions of the LICENSE AGREEMENT shall remain in full
force and effect, except as amended herein.
IN WITNESS WHEREOF, the PARTIES hereto have executed this Amendment in duplicate
originals by their duly authorized officers or representatives.
FOR REPROGENESIS, INC.
FOR THE REGENTS OF THE UNIVERSITY
OF MICHIGAN
By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇
--------------------------- -------------------------------
(authorized representative) (authorized representative)
Typed Name: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇ Typed Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇
Title: President Title: Assistant to the Director
Date: ________________________ Date: Aug. 11, 1999
23