EXCLUSIVE LICENSE AGREEMENT FOR
Exhibit
10.8
WICKING
CONDENSATE EVAPORATOR AT AC CONDENSER
|
|
U.C.
Case No.: 2008-399
|
This
exclusive license agreement (“Agreement”) is effective August 1, 2009
(“Effective Date”), by and between (a) The Regents of the University of
California ("The Regents"), a California corporation, having its statewide
administrative offices at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇-▇▇▇▇, acting through its Davis Campus Technology Transfer Services, at the
University of California, ▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇, ▇▇
▇▇▇▇▇-▇▇▇▇ and (b) Octus Energy, Inc. ("Licensee"), a Nevada
corporation having a principal place of business at ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇
▇▇▇, ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇. The Regents and Licensee will be
referred to herein, on occasion, individually as “Party” or collectively as
“Parties”.
RECITALS
Whereas,
The Regents has an assignment of title to the invention entitled “Wicking
Condensate Evaporator at AC Condenser” (the "Invention"), as described in The
Regents' Case No. 2008-399, invented by ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, employed by the
University of California, Davis when the invention was made, and to the patents
and patent applications under Patent Rights as defined below, which are directed
to the Invention;
Whereas,
The Regents and Licensee entered into a Confidentiality Agreement (UC Agreement
Control No. 2009-20-0484) effective February 25, 2009 (“Confidentiality
Agreement”), for the purpose of allowing Licensee to evaluate its interest in a
license agreement covering the Invention;
Whereas,
The Regents and Licensee entered into a Letter Agreement (UC Agreement Control
No. 2009-30-0505) effective March 10, 2009 (“Letter Agreement”), for the purpose
of granting Licensee an exclusive right to negotiate an exclusive license under
Patent Rights;
Whereas,
Licensee has provided The Regents with a commercialization plan for the
Invention and business strategy in order to allow The Regents to evaluate
Licensee’s capabilities;
1
Whereas,
Licensee is a “small entity” as defined in 37 CFR 1.27;
Whereas,
The Regents and Licensee desire to have the Invention developed and
commercialized so that products resulting therefrom may be available for public
use and benefit; and
Whereas,
Licensee desires to acquire, and The Regents desires to grant, a license under
Patent Rights to manufacture, use, sell, offer for sale and import products,
methods and services in accordance with the terms herein.
|
|
Now,
therefore, the Parties agree as
follows:
|
1. DEFINITIONS
|
1.1
|
"Affiliate"
of Licensee means any entity that, directly or indirectly, Controls
Licensee, is Controlled by Licensee, or is under common Control with
Licensee. "Control" means (i) having the actual, present capacity to elect
a majority of the directors of such entity, (ii) having the power to
direct at least forty percent (40%) of the voting rights entitled to elect
directors of such entity, or (iii) in any country where the local law will
not permit foreign equity participation of a majority of the outstanding
stock or voting rights, the ownership or control, directly or indirectly,
of the maximum percentage of such outstanding stock or voting rights
permitted by local law.
|
1.2 "Licensed
Field of Use" means all uses.
|
1.3
|
"Licensed
Method" means any process or method the use or practice of which, but for
the license granted pursuant to this Agreement, (a) would infringe, or
contribute to or induce the infringement of, a Valid Claim of any issued,
unexpired patent under Patent Rights, or (b) is covered by a
claim in a pending patent application under Patent
Rights. As used in subsection (b) of this Paragraph 1.3,
“covered by a claim in a pending patent application” means that such use
or practice would, but for the license granted pursuant to this Agreement,
constitute infringement, or contributory infringement, or inducement of
infringement of such claim if such claim were
issued.
|
|
1.4
|
"Licensed
Product" means any product, material, kit, or other article of manufacture
or composition of matter, the manufacture, use, Sale, offer for Sale, or
import of which (a) would require the performance of Licensed Methods, or
(b) but for the license granted pursuant to this Agreement, would
infringe, or contribute to or induce the infringement of a Valid Claim of
any issued, unexpired patent under Patent Rights, or (c) is covered by a
claim in a pending patent application under Patent Rights. As
used in subsection (c) above of this Paragraph 1.4, “covered by a claim in
a pending patent application” means that such manufacture, use, Sale,
offer for Sale or import would, but for the license granted pursuant to
this Agreement, constitute infringement, or contributory infringement, or
inducement of infringement of such claim if such claim were
issued.
|
2
|
1.5
|
“Licensed
Service” means a service provided using Licensed Products or Licensed
Methods, including without limitation any such service provided in the
form of contract research or other research performed by Licensee on
behalf of a third party.
|
|
1.6
|
"Licensed
Territory" means United States of America and its territories and
possessions, and any foreign countries where Patent Rights
exist.
|
|
1.7
|
"Net
Sales" means the gross invoice price charged by, and the value of non-cash
consideration owed to, Licensee or a Sublicensee for Sales
of Licensed Products and Licensed Services, less the
sum of the following actual and customary deductions where
applicable: cash, trade or quantity discounts; sales, use,
tariff, import/export duties or other excise taxes when included in gross
sales, but not value-added taxes assessed or income taxes derived from
such sales; transportation charges; and allowances or credits to customers
because of rejections or returns. For purposes of calculating
Net Sales, a Sale to a Sublicensee for end use by the Sublicensee will be
treated as a Sale at Licensee’s list
price.
|
|
1.8
|
"Patent
Rights" means The Regents' rights in the claims of U.S. Patent
Application, Serial Number 61/154,720, entitled "Wicking Condensate
Evaporator at AC Condenser" filed on February 23, 2009, by ▇▇.
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ and assigned to
The Regents; continuing applications thereof including divisions,
substitutions, extensions and continuation-in-part applications (only to
the extent, however, that claims in the continuation-in-part applications
are entitled to the priority filing date of the above-listed parent patent
application); any patents issuing on said applications or continuing
applications including reissues; and any corresponding foreign patents or
applications.
|
|
1.9
|
"Sale"
means, for Licensed Products and Licensed Services, the act of selling,
leasing or otherwise transferring, providing, or furnishing such product
or service for any consideration. Correspondingly, "Sell" means
to make or cause to be made a Sale, and "Sold" means to have made or
caused to be made a Sale.
|
3
|
1.10
|
“Sublicense”
means a sublicense under this
Agreement.
|
|
1.11
|
“Sublicensee”
means a sublicensee under this
Agreement.
|
|
1.12
|
“Sublicense
Agreement” means a sublicense agreement under this
Agreement.
|
|
1.13
|
“Valid
Claim” means a claim of a patent in any country where the claim (a) has
not expired and (b) has not been held to be invalid by a final judgment of
a court of competent jurisdiction from which no appeal can be or is
taken.
|
2. GRANT
|
2.1
|
Subject
to the limitations set forth in this Agreement, including without
limitation the rights reserved in Paragraph 2.2, The Regents hereby grants
to Licensee an exclusive license under Patent Rights, in the Licensed
Field of Use in the Licensed Territory, to make, use, offer for Sale,
import, and Sell Licensed Products and Licensed Services, and to practice
Licensed Methods.
|
|
2.2
|
The
Regents reserves the right to do any one or more of the
following:
|
|
|
(a)
|
publish
any technical data resulting from research performed by The Regents
relating to the Invention;
|
|
|
(b)
|
make
and use the Invention and associated technology for educational and
research purposes;
|
|
|
(c)
|
practice
Patent Rights in order to make and use products, and to practice methods,
for educational and research purposes;
and
|
|
|
(d)
|
allow
other educational and non-profit institutions to do any one or more of the
activities of Subparagraphs 2.2 (a), (b), and (c) above, for educational
and research purposes.
|
4
|
2.3
|
Licensee
will promptly inform The Regents of any change in Licensee’s small entity
status, as defined in 37 CFR 1.27, or of any Sublicense to an entity which
does not have small entity status, as defined in 37 CFR
1.27.
|
|
2.4
|
This
Agreement is subject to rights of, and obligations owed to, the U.S.
Government, if any.
|
3. SUBLICENSES
|
3.1
|
The
Regents hereby further grants to Licensee the right to grant to Affiliates
and to third parties a Sublicense under the rights granted to Licensee
hereunder, provided that, Licensee has exclusive rights under this
Agreement at the time of the grant of the Sublicense. Every
Sublicense will include:
|
|
|
(a)
|
a
statement setting forth the date upon which Licensee's exclusive license
rights hereunder will expire;
|
|
|
(b)
|
a
provision requiring the performance of all the obligations due to The
Regents (and, if applicable, the United States Government) under this
Agreement other than those rights and obligations specified in Article 4
(License Issue Fee/Maintenance Fees) and Paragraph 5.3 (Minimum Annual
Royalty);
|
|
|
(c)
|
a
provision requiring payment of royalties to Licensee in an amount
sufficient to permit Licensee to meet its royalty obligations to The
Regents at the rates and bases set forth in this
Agreement;
|
|
|
(d)
|
a
prohibition on the grant of further Sublicenses;
and
|
|
|
(e)
|
the
same provision for indemnification of The Regents as has been provided for
in this Agreement.
|
|
3.2
|
Licensee
will pay to The Regents twenty-five percent (25%) of any cash
consideration, and of the cash equivalent of all other consideration,
which is due to Licensee for the grant of rights under a Sublicense,
excluding payments due to Licensee as a royalty based on Sales by the
Sublicensee. Payment owed to The Regents under this Paragraph
3.2 is in addition to payments owed by Licensee to The Regents as Earned
Royalties under Paragraph 5.1 below based on Sales by the
Sublicensee.
|
5
|
3.3
|
Licensee
will notify The Regents of each Sublicense granted hereunder and furnish
to The Regents a copy of each such Sublicense Agreement and any amendments
thereof.
|
|
3.4
|
Affiliates
of Licensee will have no licenses under Patent Rights except as granted by
Sublicense pursuant to this
Agreement.
|
|
3.5
|
For
the purposes of this Agreement, the operations of all Sublicensees will be
deemed to be the operations of Licensee, for which Licensee will be
responsible.
|
|
3.6
|
Licensee
will collect and guarantee payment of all monies and other consideration
due The Regents from Sublicensees, and deliver all reports due The Regents
and received from Sublicensees.
|
|
3.7
|
Upon
termination of this Agreement for any reason, all Sublicenses that are
granted by Licensee pursuant to this Agreement where the Sublicensee is in
compliance with its Sublicense Agreement as of the date of such
termination will remain in effect and will be assigned to The Regents,
except that The Regents will not be bound to perform any duties or
obligations set forth in any Sublicenses that extend beyond the duties and
obligations of The Regents set forth in this
Agreement.
|
4. LICENSE
ISSUE FEE/MAINTENANCE FEES
|
4.1
|
Licensee
will pay to The Regents a non-creditable, non-refundable license issue fee
(“License Issue Fee”) of two thousand dollars ($2,000.00) due upon signing
of this Agreement. The Regents acknowledge the receipt of two
thousand dollars ($2,000.00) paid by Licensee under the Letter Agreement
which sum is creditable towards the License Issue Fee due under this
Paragraph 4.1. The License Issue Fee is non-refundable and not
an advance against royalties or other payments due under this
Agreement.
|
|
4.2
|
Licensee
will pay to The Regents a license maintenance fee of two thousand dollars
($2,000.00) on the one-year anniversary of the Effective Date and on each
anniversary of the Effective Date until the year following the year of the
first Sale of a Licensed Product or Licensed
Service.
|
6
5. ROYALTIES
|
5.1
|
Licensee
will pay to The Regents earned royalties (“Earned Royalties”) as
follows:
|
|
|
(a)
|
Subject
to Subparagraphs 5.1(b), 5.1(c), 5.1(d) and 5.1 (e) below, Licensee will
pay Earned Royalties at the rate of one and one-half percent (1½%) of the
Net Sales of all Licensed Products and Licensed
Services.
|
|
|
(b)
|
In
the event a Licensed Product is Sold by Licensee or a Sublicensee as a
component (“Component”) of a combination product (“Combination Product”),
and the Component is separately Sold by Licensee or a Sublicensee with a
separate list price (“Component List Price”), then the Earned Royalty due
under this Paragraph 5.1 for Net Sales of the Combination Product will be
calculated using the Component List Price rather than using the gross
invoice price charged for the Combination
Product.
|
|
|
(c)
|
In
the event a Licensed Product is Sold by Licensee or a Sublicensee as a
Component of a Combination Product, and the Component is not separately
Sold by Licensee or a Sublicensee but was previously separately Sold by
Licensee or a Sublicensee, then the Earned Royalty due under this
Paragraph 5.1 for Net Sales of the Combination Product will be calculated
using the Component List Price as previously listed, as multiplied by an
inflation adjustment factor ("Inflation Adjustment Factor"), rather than
using the gross invoice price charged for the Combination
Product. The Inflation Adjustment Factor will be the ratio of
the Consumer Price Index ("CPI") at the time of such Net Sales, as
compared to the CPI at the end of the calendar year in which such
Component was most recently previously Sold by Licensee or a
Sublicensee. In such event, Licensee will at the time of the
royalty report under Paragraph 7.4 provide The Regents in writing with the
Inflation Adjustment Factor used.
|
|
|
(d)
|
In
the event a Licensed Product is Sold by Licensee or a Sublicensee as a
Component of a Combination Product, and the Component is not, and has not
previously been, separately Sold by Licensee or a Sublicensee, then the
Earned Royalty due under this Paragraph 5.1 for Net Sales of the
Combination Product will be calculated pro rata based on the relative cost
of manufacture of the Component as compared to the cost of manufacture of
the Combination Product. In such event, Licensee will at the
time of the royalty report under Paragraph 7.4 provide The Regents with
information in writing on cost of manufacture sufficient to justify the
calculation under this Subparagraph
5.1(d).
|
7
|
|
(e)
|
In
the event a Licensed Service is Sold by Licensee or a Sublicensee as part
of a Sale of services ("Combination Services"), where the Combination
Services include both Licensed Services and other services, and where such
Sale of Combination Services is invoiced as a single invoice without
itemization as to the Licensed Services part of the Combination Services,
then Licensee will inform The Regents in writing and the Parties will
agree to an appropriate pro-rata apportionment formula for such Sales of
Combination Services.
|
|
5.2
|
Earned
Royalties accruing to The Regents will be paid to The Regents quarterly
within sixty (60) days after the end of each calendar quarter as follows:
May 31 (for first quarter); August 31 (for second quarter), November 30
(for third quarter), and February 28 (for fourth
quarter).
|
|
5.3
|
Beginning
in the calendar year after the first Sale of a Licensed Product or
Licensed Service, and in each succeeding calendar year thereafter,
Licensee will pay to The Regents a minimum annual royalty (“Minimum Annual
Royalty”) of three thousand dollars ($3,000.00) for the life of this
Agreement. The Minimum Annual Royalty will be paid to The
Regents by February 28 of each year and will be credited against the
Earned Royalties due and owing for the calendar year for which the Minimum
Annual Royalty is made.
|
|
5.4
|
All
payments due The Regents will be payable in United States
dollars. When Licensed Products and Licensed Services, are Sold
for monies other than United States dollars, Earned Royalties will first
be determined in the foreign currency of the country in which the Sale was
made and then converted into equivalent United States
dollars. The exchange rate will be that rate quoted in the
Wall Street
Journal on the last business day of the reporting
period.
|
8
|
5.5
|
Payments
due for Sales occurring in any country outside the United States will not
be reduced by any taxes, fees, or other charges imposed by the government
of such country on the remittance of royalty income. Licensee
will also be responsible for all bank transfer
charges.
|
|
5.6
|
Licensee
will make all payments under this Agreement either by check or electronic
transfer, payable to "The Regents of the University of California" and
Licensee will forward such payments to The Regents at the address shown in
Paragraph 23.1 below.
|
|
5.7
|
If
any patent or patent application, or any claim thereof, included within
Patent Rights expires or is held invalid in a final decision by a court of
competent jurisdiction and last resort and from which no appeal has been
or can be taken, all obligation to pay Earned Royalties based on such
patent, patent application or claim, or any claims patentably indistinct
therefrom will cease as of the date of such expiration or final
decision. Licensee will not, however, be relieved from paying
any Earned Royalties that accrued before such expiration or decision or
that are based on another valid patent or claim not expired or involved in
such decision.
|
6. DILIGENCE
|
6.1
|
Licensee,
upon execution of this Agreement, will diligently proceed with the
development, manufacture, and Sale of Licensed Products, Licensed
Services, and Licensed Methods, and will diligently market them in
quantities sufficient to meet the market
demand.
|
|
6.2
|
In
addition to its obligations under Paragraph 6.1, Licensee specifically
commits to achieving the following objectives and milestones in its
activities under this Agreement:
|
|
|
(a)
|
Milestone
#1: Funding of Licensee: $250,000.00 by December 31,
2010;
|
|
|
(b)
|
Milestone
#2: Manufacturing of Licensed Product: begins (including by a
third party on behalf of Licensee) by May 31,
2010;
|
9
|
|
(c)
|
Milestone
#3: First Sales of Licensed Product or Licensed Services: by
August 31, 2010; and
|
|
|
(d)
|
Milestone
#4: 1,000 units of Licensed Product Sold: by August 31,
2011.
|
|
6.3
|
If
Licensee is unable to meet any of its diligence obligations set forth in
Paragraphs 6.1 and 6.2, then The Regents will so notify Licensee of
failure to perform. Licensee will have the right and option to extend the
target date of any such diligence obligation for a period of six (6)
months upon the payment of five thousand dollars ($5000) within thirty
(30) days of the date to be extended for each such extension option
exercised by Licensee. Licensee may further extend the target
date of any diligence obligation for an additional six (6) months upon
payment of an additional five thousand dollars
($5000). Additional extensions may be granted only by mutual
written agreement of the Parties. These payments are in
addition to the Minimum Annual Royalty payments specified in Paragraph
5.3. Should Licensee opt not to extend the obligation or fail
to meet it by the extended target date, then The Regents will have the
right and option either to terminate this Agreement or to reduce
Licensee's exclusive license to a non-exclusive license. This
right, if exercised by The Regents, supersedes the rights granted in
Article 2.
|
|
6.4
|
To
exercise either the right to terminate this Agreement or to reduce the
license to a non-exclusive license for lack of diligence under Paragraph
6.1 or 6.2, The Regents will give Licensee written notice of the
deficiency. Licensee thereafter has sixty (60) days to cure the
deficiency or to request arbitration. If The Regents has not
received satisfactory tangible evidence that the deficiency has been cured
by the end of the sixty (60)-day period, then The Regents may, at its
option, either terminate the Agreement or reduce Licensee's exclusive
license to a non-exclusive license by giving written notice to
Licensee. These notices will be subject to Article 22
(Notices).
|
7. PROGRESS
AND ROYALTY REPORTS
|
7.1
|
For
the period beginning January 10, 2010, within sixty (60) days of each
subsequent June 30 and December 31, Licensee will submit to The Regents a
semi-annual progress report covering Licensee's activities related to the
development and testing of all Licensed Products, Licensed Services and
Licensed Methods and the obtaining of necessary governmental approvals, if
any, for marketing in the United States. These progress reports
will be made for all development activities until the first Sale occurs in
the United States.
|
10
|
7.2
|
Each
progress report will be a sufficiently detailed summary of activities of
Licensee and any Sublicensees so that The Regents may evaluate and
determine Licensee’s progress in development of Licensed Products,
Licensed Services, and Licensed Methods, and in meeting its diligence
obligations under Article 6, and will include (but not be limited to) the
following: summary of work completed and in progress; current schedule of
anticipated events and milestones, including diligence milestones under
Paragraph 6.2; anticipated market introduction dates for the Licensed
Territory; and Sublicensees’ activities during the reporting
period.
|
|
7.3
|
In
Licensee’s progress report immediately subsequent to the first Sale by
Licensee or a Sublicensee of Licensed Products or Licensed Services,
Licensee will report the date of such first
Sale.
|
|
7.4
|
After
the first Sale of a Licensed Product or Licensed Service, Licensee will
make quarterly royalty reports to The Regents within sixty (60) days after
the quarters ending March 31, June 30, September 30, and December 31, of
each year. Each such royalty report will include at least the
following:
|
|
|
(a)
|
The
number of Licensed Products manufactured and the number of Licensed
Products and Licensed Services Sold, and if applicable, indicating which
Licensed Products and Licensed Services are Combination Products and
Combination Services;
|
|
|
(b)
|
Gross
revenue from Sale of Licensed Products and Licensed
Services;
|
|
|
(c)
|
Net
Sales pursuant to Paragraph 1.7;
|
|
|
(d)
|
Total
Earned Royalties due The Regents;
and
|
|
|
(e)
|
Names
and addresses of any new Sublicensees along with a summary of the material
terms of each new Sublicense Agreement entered into during the reporting
quarter.
|
|
7.5
|
If
no Sales have occurred during the report period, a statement to this
effect is required in the royalty report for that
period.
|
11
8. BOOKS
AND RECORDS
|
8.1
|
Licensee
will keep full, true, and accurate books of accounts containing all
particulars that may be necessary for the purpose of showing the amount of
Earned Royalties payable to The Regents and Licensee’s compliance with
other obligations under this Agreement. Said books of accounts
will be kept at Licensee's principal place of business or the principal
place of business of the appropriate division of Licensee to which this
Agreement relates. Said books and the supporting data will be
open at all reasonable times during normal business hours upon reasonable
notice, for five (5) years following the end of the calendar year to which
they pertain, to the inspection and audit by representatives of The
Regents for the purpose of verifying Licensee's royalty statement or
compliance in other respects with this Agreement. Such
representatives will be bound to hold all information in confidence except
as necessary to communicate Licensee's non-compliance with this Agreement
to The Regents.
|
|
8.2
|
The
fees and expenses of The Regents' representatives performing such an
examination will be borne by The Regents. However, if an error
in underpaid royalties to The Regents of more than five percent (5%) of
the total Earned Royalties due for any year is discovered, then the fees
and expenses of these representatives will be borne by
Licensee.
|
9. LIFE
OF THE AGREEMENT
|
9.1
|
Unless
otherwise terminated by the operation of law or by acts of the Parties in
accordance with the terms of this Agreement, this Agreement will be in
force from the Effective Date and will remain in effect for the life of
the last-to-expire patent or last-to-be-abandoned patent application
licensed under this Agreement, whichever is
later.
|
12
|
9.2
|
Any
termination of this Agreement will not affect the rights and obligations
set forth in the following
articles:
|
| Article 1 | Definitions | |
| Article 3 | Sublicenses | |
| Article 8 | Books and Records | |
| Article 9 | Life of the Agreement | |
|
|
Article
12
|
Disposition
of Licensed Products Upon
Termination
|
|
|
Article
15
|
Use
of Names and Trademarks
|
|
|
Article
16
|
Limited
Warranties
|
|
|
Article
18
|
Indemnification
|
|
|
Article
22
|
Notices
|
|
|
Article
23
|
Payments
|
|
|
Article
25
|
Confidentiality
|
|
|
Article
28
|
Applicable
Law; Venue; Attorneys’ Fees
|
|
|
Article
29
|
Scope
of Agreement
|
|
9.3
|
Any
termination of this Agreement will not relieve Licensee of its obligation
to pay any monies due or owing at the time of such termination and will
not relieve any obligations, of either Party to the other Party,
established prior to termination.
|
10. TERMINATION
BY THE REGENTS
|
10.1
|
If
Licensee should violate or fail to perform any term of this Agreement,
then The Regents may give written notice of such default ("Notice of
Default") to Licensee. If Licensee should fail to repair such
default within sixty (60) days of the effective date of such notice, The
Regents will have the right to terminate this Agreement and the licenses
herein by a second written notice ("Notice of Termination") to
Licensee. If a Notice of Termination is sent to Licensee, this
Agreement will automatically terminate on the effective date of such
notice. Such termination will not relieve Licensee of its
obligation to pay any royalty or license fees owing at the time of such
termination and will not impair any accrued rights of The
Regents. These notices will be subject to Article 22
(Notices).
|
|
10.2
|
Notwithstanding
Paragraph 10.1 above, this Agreement will terminate immediately, upon
written notice given by The Regents in its sole discretion, if Licensee
files a claim including in any way the assertion that any portion of The
Regents’ Patent Rights is invalid or unenforceable, where the filing of
such claim is by the Licensee, by a third party on behalf of the Licensee,
or by a third party at the written urging of the
Licensee.
|
|
10.3
|
Notwithstanding
Paragraph 10.1 above, this Agreement will terminate immediately, upon
written notice given by The Regents in its sole discretion, in the event
of the filing of a petition for relief under the United States Bankruptcy
Code by or against Licensee as a debtor or alleged debtor.
|
13
11. TERMINATION
BY LICENSEE
|
11.1
|
Licensee
will have the right at any time to terminate this Agreement in whole or as
to any portion of Patent Rights by giving notice in writing to The
Regents. Such notice of termination will be subject to Article
22 (Notices) and termination of this Agreement will be effective ninety
(90) days after the effective date of such
notice.
|
|
11.2
|
Any
termination pursuant to Paragraph 11.1 will not relieve Licensee of any
obligation or liability accrued hereunder prior to such termination or
rescind anything done by Licensee or any payments made to The Regents
hereunder prior to the time such termination becomes effective, and such
termination will not affect in any manner any rights of The Regents
arising under this Agreement prior to such
termination.
|
12. DISPOSITION
OF LICENSED PRODUCTS UPON TERMINATION
|
12.1
|
Upon
termination of this Agreement, for a period of one hundred twenty (120)
days after the date of termination Licensee may complete and Sell any
partially made Licensed Products and continue to render any previously
commenced Licensed Services, and continue the practice of Licensed Methods
only to the extent necessary to do the foregoing; provided that, all such
Sales will be subject to the terms of this Agreement including, but not
limited to, the payment of royalties at the rate and at the time provided
herein and the rendering of reports
thereon.
|
13. PATENT
PROSECUTION AND MAINTENANCE
|
13.1
|
The
Regents will diligently prosecute and maintain the United States and
foreign patent applications and patents under Patent Rights, subject to
Licensee’s reimbursement of The Regents’ out-of-pocket costs under Article
13.3 below. All patent applications and patents under Patent
Rights will be held in the name of The Regents. The Regents
will have sole responsibility for retaining and instructing patent
counsel. The Regents will promptly provide Licensee with copies
of all official patent office correspondence so that Licensee may be
informed of the continuing prosecution, and Licensee agrees to keep this
documentation confidential in accordance with Article
25. Licensee may comment upon such documentation, provided
that, if Licensee has not commented upon such documentation in reasonable
time for The Regents to sufficiently consider Licensee’s comments prior to
the deadline for filing a response with the relevant government patent
office, The Regents will be free to respond appropriately without
consideration of Licensee's
comments.
|
14
|
13.2
|
The
Regents will use reasonable efforts to prepare or amend any patent
application within Patent Rights to include claims reasonably requested by
Licensee to protect the Licensed Products or Licensed Services
contemplated to be Sold or Licensed Methods to be practiced under this
Agreement.
|
|
13.3
|
Subject
to Paragraph 13.4, all past, present, and future costs for preparing,
filing, prosecuting, and maintaining all United States and foreign patent
applications and patents under Patent Rights (including without limitation
the cost of interferences, reexaminations, and oppositions) will be paid
by Licensee, so long as the licenses granted to Licensee herein are
exclusive. Such payments by Licensee are due within thirty (30)
days after receipt of invoice from The Regents. If, however,
The Regents reduces the exclusive licenses granted herein to non-exclusive
licenses pursuant to Paragraphs 6.3 or 6.4, and The Regents grants
additional license(s), the subsequent costs of preparing, filing,
prosecuting and maintaining such patent applications and patents will be
divided equally among the licensed parties from the effective date of each
subsequently granted license
agreement.
|
|
13.4
|
Licensee's
obligation to underwrite and to pay all United States and foreign patent
filing, prosecution, and maintenance costs for Patent Rights will continue
for so long as this Agreement remains in effect, provided that, Licensee
may terminate its obligations with respect to any given patent application
or patent under Patent Rights in any or all designated countries upon
three (3) months’ written notice to The Regents. The Regents
will undertake to curtail applicable patent costs billable to Licensee
when such a notice is received from Licensee. The Regents may
continue prosecution and/or maintenance of such patent applications or
patents at its sole discretion and expense, provided that, Licensee will
have no further right or licenses
thereunder.
|
14. MARKING
|
14.1
|
Licensee
will ▇▇▇▇ all products made, used or Sold under this Agreement, or their
containers, in accordance with applicable patent marking
laws.
|
15
15. USE
OF NAMES AND TRADEMARKS
|
15.1
|
Nothing
contained in this Agreement will be construed as conferring any right to
use in advertising, publicity or other promotional activities any name,
trademark, trade name, or other designation of either Party by the other
(including any contraction, abbreviation, or simulation of any of the
foregoing). Unless required by law or consented to in writing
by The Regents, the use by Licensee of the name "The Regents of the
University of California" or the name of any University of California
campus in advertising, publicity or other promotional activities is
expressly prohibited.
|
16. LIMITED
WARRANTIES
|
16.1
|
The
Regents warrants to Licensee that it has the lawful right to grant this
license.
|
|
16.2
|
This
license and the associated Invention are provided WITHOUT WARRANTY OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER WARRANTY,
EXPRESSED OR IMPLIED. THE REGENTS MAKES NO REPRESENTATION OR
WARRANTY THAT THE INVENTION, PATENT RIGHTS, LICENSED PRODUCTS, LICENSED
SERVICES OR LICENSED METHODS WILL NOT INFRINGE ANY PATENT OR OTHER
PROPRIETARY RIGHT.
|
|
16.3
|
IN
NO EVENT WILL THE REGENTS BE LIABLE FOR ANY INCIDENTAL, SPECIAL OR
CONSEQUENTIAL DAMAGES RESULTING FROM EXERCISE OF THIS LICENSE OR THE USE
OF THE INVENTION, PATENT RIGHTS, LICENSED METHODS, LICENSED SERVICES OR
LICENSED PRODUCTS.
|
|
16.4
|
Nothing
in this Agreement is or will be construed
as:
|
|
|
(a)
|
A
warranty or representation by The Regents as to the validity,
enforceability or scope of Patent Rights;
or
|
|
|
(b)
|
A
warranty or representation that anything made, used, or Sold under any
license granted in this Agreement is or will be free from infringement of
patents of third parties; or
|
16
|
|
(c)
|
An
obligation to bring or prosecute actions or suits against third parties
for patent infringement, except as provided in Article 17;
or
|
|
|
(d)
|
Conferring
by implication, estoppel, or otherwise any license or rights under any
patents of The Regents other than Patent Rights, regardless of whether
such patents are dominant or subordinate to Patent Rights;
or
|
|
|
(e)
|
An
obligation to furnish any know-how not provided in the patents and patent
applications under Patent Rights.
|
17. PATENT
INFRINGEMENT
|
17.1
|
In
the event that Licensee learns of the substantial infringement of any
Patent Rights, Licensee will promptly provide The Regents with notice and
reasonable evidence of such infringement (“Infringement
Notice”). During the period and in a jurisdiction where
Licensee has exclusive rights under this Agreement, neither Party will
notify a third party, including the infringer, of the infringement without
first obtaining consent of the other Party, which consent will not be
unreasonably withheld. Both Parties will use diligent efforts,
in cooperation with each other, to terminate such infringement without
litigation.
|
|
17.2
|
(a) If
such infringing activity has not been abated within ninety (90) days
following the effective date of the Infringement Notice, Licensee may
institute suit for patent infringement against the
infringer. The Regents may voluntarily join such suit at The
Regents’ expense, but The Regents may not thereafter separately commence
suit against the infringer for the acts of infringement that are the
subject of Licensee’s suit or any judgment rendered in that
suit. Licensee may not join The Regents in a suit initiated by
Licensee without The Regents’ prior written consent. If, in a
suit initiated by Licensee, The Regents is involuntarily joined other than
by Licensee, Licensee will pay any costs incurred by The Regents arising
out of such suit, including but not limited to, any legal fees of counsel
that The Regents selects and retains to represent it in the
suit.
|
| (b) If, within a hundred and twenty (120) days following the effective date of the Infringement Notice, the infringing activity has not been abated and if Licensee has not brought suit against the infringer, The Regents may in its sole discretion institute suit for patent infringement against the infringer. If The Regents institutes such suit, Licensee may not join such suit without The Regents’ consent and may not thereafter separately commence suit against the infringer for the acts of infringement that are the subject of The Regents’ suit or any judgment rendered in that suit. |
17
|
17.3
|
Such
legal action as is decided upon will be at the expense of the Party on
account of whom suit is brought and all recoveries recovered thereby will
belong to such Party, provided that legal action brought jointly by The
Regents and Licensee and participated in by both will be at the joint
expense of both Parties and all recoveries will be allocated in the
following order: a) to each Party reimbursement for its
attorneys' costs, fees, and other related out-of-pocket expenses to the
extent each Party paid for such costs, fees, and expenses until all such
costs, fees, and expenses are consumed for each Party; and b) any
remaining amount shared jointly by both Parties in proportion to the share
of expenses paid by each Party, but in no event will The Regents’ share be
less than twenty-five percent (25%) of such remaining amount if The
Regents is a Party.
|
|
17.4
|
Each
Party will cooperate with the other Party in litigation instituted
hereunder but at the expense of the Party on account of whom suit is
brought. Such litigation will be controlled by the Party
bringing the action, except that The Regents may be represented by counsel
of its choice in any suit brought by
Licensee.
|
|
17.5
|
Any
agreement made by Licensee for the purposes of settling litigation or
other dispute will comply with the requirements of Article 3
above. In no event may Licensee admit liability or wrongdoing
on behalf of The Regents without The Regents’ prior written
consent.
|
18. INDEMNIFICATION
|
18.1
|
Licensee
will, and will require its Sublicensees to, indemnify, hold harmless, and
defend The Regents and its officers, employees, and agents; sponsor(s) of
the research that led to the Invention; and the inventors of any patents
and patent applications under Patent Rights and their employers, against
any and all claims, suits, losses, damages, costs, fees, and expenses
resulting from or arising out of exercise of this license or any
Sublicense. This indemnification will include, but not be
limited to, any product liability.
|
18
|
18.2
|
Licensee,
at its sole cost and expense, will insure its activities in connection
with any work performed hereunder and will obtain, keep in force, and
maintain the following insurance:
|
|
|
(a)
|
Commercial
Form General Liability Insurance (contractual liability included) with
limits as follows:
|
Each
Occurrence
......................................................$5,000,000
Products/Completed
Operations Aggregate….$10,000,000
Personal
and Advertising Injury ..........................$5,000,000
General
Aggregate
.................................................$10,000,000
If the
above insurance is written on a claims-made form, it will continue for three (3)
years following termination or expiration of this Agreement. The insurance will
have a retroactive date of placement prior to or coinciding with the Effective
Date of this Agreement; and
|
|
(b)
|
Worker's
Compensation as legally required in the jurisdiction in which Licensee is
doing business.
|
|
18.3
|
The
coverage and limits referred to in Subparagraphs 18.2(a) and 18.2(b) above will not in
any way limit the liability of Licensee under this Article 18. Upon the
execution of this Agreement, Licensee will furnish The Regents with
certificates of insurance evidencing compliance with all requirements, and
Licensee will promptly notify The Regents of any material modification of
the insurance coverages. Such certificates
will:
|
|
|
(a)
|
provide
for thirty (30) days' (ten (10) days for non-payment of premium) advance
written notice to The Regents of any cancellation of insurance
coverages;
|
|
|
(b)
|
indicate
that The Regents has been endorsed as an additional insured under the
coverage described above in Paragraph l8.2;
and
|
|
|
(c)
|
include
a provision that the coverage will be primary and will not participate
with, nor will be excess over, any valid and collectable insurance or
program of self-insurance maintained by The
Regents.
|
|
18.4
|
The
Regents will promptly notify Licensee in writing of any claim or suit
brought against The Regents for which The Regents intends to invoke the
provisions of this Article 18. Licensee will keep The Regents
informed of its defense of any claims pursuant to this Article
18.
|
19
19. COMPLIANCE
WITH LAWS/EXPORT CONTROLS
|
19.1
|
The
Licensee will comply with all applicable international, national, state,
regional, and local laws and regulations in performing its obligations
hereunder and in Licensee’s use, manufacture, Sale, or import of the
Licensed Products or Licensed Services, or in Licensee’s practice of
Licensed Methods. The Licensee will observe all applicable
United States and foreign laws and regulations governing the transfer to
foreign countries of technical data related to Licensed Products,
including without limitation with respect to the International Traffic in
Arms Regulations (ITAR) and the Export Administration
Regulations.
|
|
19.2
|
Licensee
understands that The Regents is subject to United States laws and
regulations (including the Arms Export Control Act, as amended, and the
Export Administration Act of 1979), controlling the export of technical
data, computer software, laboratory prototypes and other commodities, and
The Regents' obligations to Licensee under this Agreement are contingent
on and subject to compliance with such laws and
regulations. The transfer of certain technical data and/or
commodities may require a license from the cognizant agency of the United
States Government and/or written assurances by Licensee that Licensee will
not export such technical data and/or commodities to certain foreign
countries without prior approval of such agency. The Regents
neither represents that such a license will not be required nor that, if
required, it will be issued.
|
20. GOVERNMENT
APPROVAL OR REGISTRATION
|
20.1
|
If
this Agreement or any associated transaction is required by the law of any
nation to be either approved or registered with any governmental agency,
Licensee will assume all legal obligations to do so. Licensee
will notify The Regents if it becomes aware that this Agreement is subject
to a United States or foreign government reporting or approval
requirement. Licensee will make all necessary filings and pay
all costs including fees, penalties, and all other out-of-pocket costs
associated with such reporting or approval
process.
|
20
21. ASSIGNMENT
|
21.1
|
This
Agreement is binding upon and will inure to the benefit of The Regents,
its successors and assigns. This Agreement is personal to
Licensee and assignable by Licensee only with the written consent of The
Regents, provided that, Licensee may, on written notice to The Regents,
assign this Agreement, including without limitation all obligations owed
to The Regents hereunder, to an acquiror of all or substantially all of
Licensee's stock or assets.
|
22. NOTICES
|
22.1
|
All
notices under this Agreement will be deemed to have been fully given and
effective when done in writing and delivered in person, or mailed by
registered or certified U.S. mail, or deposited with a carrier service
requiring signature by recipient, and addressed as
follows:
|
|
To
The Regents:
|
Technology
Transfer Services
|
|
|
▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
|
||
|
▇▇▇▇▇,
▇▇ ▇▇▇▇▇-▇▇▇▇
|
||
|
Attn.: Director
(UC Case No. 2008-399)
|
||
|
To
Licensee:
|
Octus
Energy, Inc.
|
|
|
▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇
|
||
|
▇▇▇▇▇
▇▇▇
|
||
|
▇▇▇▇▇,
▇▇ ▇▇▇▇▇
|
||
|
Attn.: ▇▇▇▇
▇▇▇▇
|
Either
Party may change its address upon written notice to the other
Party.
23. PAYMENTS
|
23.1
|
Payments
to The Regents will be made to the following
address:
|
| The Regents of the University of California | ||
| ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇ | ||
| ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇ | ||
|
Attention: Executive
Director,
|
||
| Research Administration and | ||
| Technology Transfer | ||
|
Referring
to: UC Case No.
2008-399
|
21
|
23.2
|
If
monies owed to The Regents under this Agreement are not received by The
Regents when due, Licensee will pay to The Regents interest charges at a
rate of ten percent (10%) per annum. Such interest will be
calculated from the date payment was due until actually received by The
Regents. Such accrual of interest will be in addition to, and
not in lieu of, enforcement of any other rights of The Regents related to
such late payment. Acceptance of any late payment will not
constitute a waiver under Article 24 (Waiver) of this
Agreement.
|
24. WAIVER
|
24.1
|
The
failure of either Party to assert a right hereunder or to insist upon
compliance with any term or condition of this Agreement will not
constitute a waiver of that right or excuse a similar subsequent failure
to perform any such term or condition by the other Party. None
of the terms and conditions of this Agreement can be waived except by the
written consent of the Party waiving
compliance.
|
25. CONFIDENTIALITY
|
25.1
|
Subject
to Paragraphs 25.2 and 25.3 below, each Party will hold the other Party's
proprietary business and technical information, patent prosecution
material and other proprietary information, including the negotiated terms
of this Agreement, in confidence and against disclosure to third parties
with at least the same degree of care as it exercises to protect its own
data and license agreements of a similar nature. This
obligation will expire five (5) years after the termination or expiration
of this Agreement.
|
|
25.2
|
Nothing
contained herein will in any way restrict or impair the right of Licensee
or The Regents to use, disclose, or otherwise deal with any information or
data which:
|
|
|
(a)
|
at
the time of disclosure to a receiving Party is available to the public or
thereafter becomes available to the public by publication or otherwise
through no act of the receiving Party;
or
|
22
|
|
(b)
|
the
receiving Party can show by written record was in its possession prior to
the time of disclosure to it hereunder and was not acquired directly or
indirectly from the disclosing Party;
or
|
|
|
(c)
|
is
independently made available to the receiving Party without restrictions
as a matter of right by a third party;
or
|
|
|
(d)
|
is
independently developed by employees of the receiving Party who did not
have access to the information disclosed by the disclosing Party;
or
|
|
|
(e)
|
is
subject to disclosure under the California Public Records Act or other
requirements of law.
|
|
25.3
|
The
Regents will be free to release to the inventors and senior administrators
employed by The Regents the terms and conditions of this Agreement upon
their request. If such release is made, The Regents will inform
such employees of the confidentiality obligations set forth above and will
request that they do not disclose such terms and conditions to
others. Should a third party inquire whether a license to
Patent Rights is available, The Regents may disclose the existence of this
Agreement and the extent of the grant in Articles 2 and 3 to such third
party, but will not disclose the name of Licensee unless (a) Licensee has
already made such disclosure publicly, (b) Licensee otherwise consents to
such disclosure, or (c) such disclosure is required under the California
Public Records Act or other requirements of
law.
|
|
25.4
|
Licensee
and The Regents agree to destroy or return to the disclosing Party
proprietary information received from the other in its possession within
fifteen (15) days following the effective date of termination of this
Agreement. However, each Party may retain one copy of
proprietary information of the other solely for archival purposes in
non-working files for the sole purpose of verifying the ownership of the
proprietary information, provided such proprietary information will be
subject to the confidentiality provisions set forth in this Article
25. Licensee and The Regents agree to provide each other,
within thirty (30) days following termination of this Agreement, with a
written notice that proprietary information has been returned or
destroyed.
|
23
26. FORCE
MAJEURE
|
26.1
|
Except
for Licensee’s obligation to make any payments to The Regents hereunder,
and subject to Paragraph 26.2, below, the Parties will be
excused from any performance required hereunder if such performance is
rendered impossible or infeasible due to any catastrophe or other major
event beyond their reasonable control, including, without limitation, war,
riot, and insurrection; laws, proclamations, edicts, ordinances, or
regulations; strikes, lockouts, or other serious labor disputes; and
floods, fires, explosions, or other natural disasters. When
such events have abated, the Parties' respective obligations hereunder
will resume.
|
|
26.2
|
Either
Party to this Agreement will have the right to terminate this Agreement
upon thirty (30) days’ prior written notice if either Party is unable to
fulfill its obligations under this Agreement due to any of the causes
specified in Paragraph 26.1 above for a period of one (1)
year.
|
27. SEVERABILITY
|
27.1
|
The
provisions of this Agreement are severable, and in the event that any
provision of this Agreement is determined to be invalid or unenforceable
under any controlling body of law, such invalidity or enforceability will
not in any way affect the validity or enforceability of the remaining
provisions hereof.
|
28. APPLICABLE
LAW; VENUE; ATTORNEYS’ FEES
|
28.1
|
THIS
AGREEMENT WILL BE CONSTRUED, INTERPRETED, AND APPLIED IN ACCORDANCE WITH
THE LAWS OF THE STATE OF CALIFORNIA, excluding any choice of law rules
that would direct the application of the laws of another jurisdiction,
except that the scope and validity of any patent or patent application
under Patent Rights will be determined by the applicable law of the
country of such patent or patent application. Any legal action
brought by the Parties relating to this Agreement will be conducted in San
Francisco, California. The prevailing Party in any legal action under this
Agreement will be entitled to recover its reasonable attorneys’ fees in
addition to its costs and necessary
disbursements.
|
24
29. SCOPE
OF AGREEMENT
|
29.1
|
Neither
Party will use this Agreement as a basis to invoke the CREATE Act, 35
U.S.C. 103 (c) (2), without the written consent of the other
Party.
|
|
29.2
|
This
Agreement incorporates the entire agreement between the Parties with
respect to the subject matter hereof and supersedes all previous
communications, representations or understandings, whether oral or
written, between the Parties relating to the subject matter
hereof. The Confidentiality Agreement and Letter Agreement
specified in the Recitals above of this Agreement, effective February 25,
2009, and March 10, 2009, respectively, are hereby
superseded.
|
|
29.3
|
This
Agreement may be altered or modified only by written amendment duly
executed by the Parties.
|
In
witness whereof, the Parties have executed this Agreement in duplicate originals
by their duly authorized officers or representatives.
| OCTUS ENERGY, INC. |
THE
REGENTS OF THE UNIVERSITY
OF
CALIFORNIA
|
||||
| By: |
/s/
▇▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇
|
By |
/s/
▇▇▇▇▇
▇. ▇▇▇▇▇
|
||
|
Printed
Name: ▇▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇
Title: President
& CEO
|
▇▇▇▇▇
▇. ▇▇▇▇▇
Executive
Director
UC
Davis InnovationAccess
|
||||
| Date: August 27, 2009 | Date |
|
|||
25
BETWEEN
OCTUS
ENERGY, INC.
AND
THE
REGENTS OF THE UNIVERSITY OF CALIFORNIA
FOR
WICKING
CONDENSATE EVAPORATOR AT AC CONDENSER
|
|
UC
Case
No.: 2008-399
|
TABLE OF
CONTENTS
|
RECITALS
|
|
1
|
|
1.
|
DEFINITIONS
|
2
|
|
2.
|
GRANT
|
4
|
|
3.
|
SUBLICENSES
|
5
|
|
4.
|
LICENSE
ISSUE FEE/MAINTENANCE FEES
|
6
|
|
5.
|
ROYALTIES
|
7
|
|
6.
|
DILIGENCE
|
9
|
|
7.
|
PROGRESS
AND ROYALTY REPORTS
|
10
|
|
8.
|
BOOKS
AND RECORDS
|
12
|
|
9.
|
LIFE
OF THE AGREEMENT
|
12
|
|
10.
|
TERMINATION
BY THE REGENTS
|
13
|
|
11.
|
TERMINATION
BY LICENSEE
|
14
|
|
12.
|
DISPOSITION
OF LICENSED PRODUCTS UPON TERMINATION
|
14
|
|
13.
|
PATENT
PROSECUTION AND MAINTENANCE
|
14
|
|
14.
|
MARKING
|
15
|
|
15.
|
USE
OF NAMES AND TRADEMARKS
|
16
|
|
16.
|
LIMITED
WARRANTIES
|
16
|
|
17.
|
PATENT
INFRINGEMENT
|
17
|
|
18.
|
INDEMNIFICATION
|
18
|
|
19.
|
COMPLIANCE
WITH LAWS/EXPORT CONTROLS
|
20
|
|
20.
|
GOVERNMENT
APPROVAL OR REGISTRATION
|
20
|
|
21.
|
ASSIGNMENT
|
20
|
|
22.
|
NOTICES
|
21
|
|
23.
|
PAYMENTS
|
21
|
|
24.
|
WAIVER
|
22
|
|
25.
|
CONFIDENTIALITY
|
22
|
|
26.
|
FORCE
MAJEURE
|
23
|
|
27.
|
SEVERABILITY
|
24
|
|
28.
|
APPLICABLE
LAW; VENUE; ATTORNEYS’ FEES
|
24
|
|
29.
|
SCOPE
OF AGREEMENT
|
24
|
i