EXHIBIT 6.1
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EXCLUSIVE NUTRITIONAL SUPPLEMENT LICENSE AGREEMENT
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THIS LICENSE AGREEMENT (the "Agreement") is made and is effective as of the
day of October, 1999, by and between RUTGERS, THE STATE UNIVERSITY OF NEW
JERSEY, having its statewide Office of Corporate Liaison and Technology Transfer
at ▇▇ ▇▇▇▇▇▇ ▇▇▇▇, ASB ▇▇▇▇▇ ▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇, (hereinafter
referred to as "Rutgers"), and Nucycle Therapy Inc., a New Jersey corporation
having a principal place of business at ▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇, ▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ (hereinafter referred to as "Licensee").
RECITALS
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WHEREAS, This Agreement is entered into pursuant to the terms of a United
States Bankruptcy Court District of New Jersey Stipulation and Order (the
"Order") in Case No. 99-55905 (KCF) In re PHYTOTECH, INC., a New Jersey
Corporation, Debtor.
WHEREAS, Certain inventions relating to the development of phytoremediation
technology, with application to the field of nutritional and dietary
supplements, were made in the course of research sponsored by Licensee at
Rutgers, The State University of New Jersey, by ▇▇. ▇▇▇▇ ▇▇▇▇▇▇, ▇▇. ▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇, Dr. ▇▇▇▇ ▇▇▇▇, ▇▇. ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇, and Dr. ▇▇▇▇▇ ▇▇▇▇ (hereinafter,
"Inventors") and were previously licensed to Licensee in the licensed field of
commercial phytoremediation, and Rutgers has obtained, pursuant to the terms of
the Order, a 50% undivided right, title and interest in and to certain
nutritional supplement inventions and a
related patent application and certain hyperaccumulation inventions and related
patent applications; and
WHEREAS, Licensee entered into a research agreement relating to the
development of phytoremediation technology with Rutgers effective November 19,
1993 and amended by Modification No. 1 effective January 13, 1994 and
Modification No. 2 effective December 7, 1994 ("Research Agreement I") which
granted certain license option rights in certain of the aforementioned
inventions and this Agreement provides for incorporation into this Agreement of
inventions for which Licensee exercises its option rights; and
WHEREAS, Licensee is a "small business firm" as defined in 15 U.S.C. 632;
and
WHEREAS, Both parties recognize and agree that royalties due hereunder will
be paid on both pending patent applications and issued patents; and
WHEREAS, Rutgers is desirous that the licensed property be developed and
utilized to the fullest extent so that the benefits can be enjoyed by the
general public.
NOW THEREFORE, for good and valuable consideration, the receipt, adequacy
and sufficiency of which is hereby acknowledged, and for and in consideration of
the mutual covenants and agreements herein contained, the parties agree as
follows:
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1. DEFINITIONS
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1.1 "Affiliate" means any corporation or business entity that directly or
indirectly controls, is controlled by, or is under common control with Licensee
to the extent of at least fifty percent (50%) of the outstanding stock or other
voting rights entitled to elect directors.
1.2 "Data" means all information owned and/or controlled by Rutgers which
is acquired by Licensee, its Affiliates or its sublicensees directly or
indirectly from or through Rutgers, its units, its employees the Inventors, or
its consultants relating to the Licensed Field, Rutgers Patent Rights, Licensed
Products, or this Agreement, including but not limited to all patent prosecution
documents and all information received from Inventors.
1.3 "Licensed Field" means the use for nutritional and dietary
supplements.
1.4 "Licensed Method" means any process, method, or use that is covered by
Rutgers Patent Rights or whose use or practice would constitute, but for the
license granted to Licensee pursuant to this Agreement, an infringement of any
issued or pending claim within Rutgers Patent Rights.
1.5 "Licensed Product (s)" means any material or product or kit, or any
service, process, or procedure that (1) either is covered by Rutgers Patent
Rights or whose manufacture, use, or sale would constitute, but for the license
granted to Licensee pursuant to this Agreement, an infringement of any claim
within Rutgers Patent Rights or (2) is discovered, developed, made,
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sold, registered, or practiced using Licensed Method or which may be used to
practice the Licensed Method, in whole or in part.
1.6 "Net Sales" means the total of the gross consideration received for
Licensed Products made, used, leased, transferred, sold or otherwise disposed of
by Licensee, its Affiliates, and its sublicensees, at arms-length prices, less
the sum of the following actual and customary deductions (net of rebates or
allowances of such deductions received by Licensee, its Affiliates and
sublicensees) included on the invoice and actually paid: trade discounts; sales,
excise or use taxes imposed upon particular sales; import/export, customs or
duties or similar levies paid by Licensee; insurance; costs of packaging
materials, boxes, cartons and crates required for shipping; returns; and
shipping, transportation and delivery charges. In the event Licensee or any of
its Affiliates or sublicensees makes a transfer of a Licensed Product to a third
party for other than monetary consideration or for less than fair market value,
such transfer shall be considered a sale hereunder to be calculated at a fair
market value for accounting and royalty purposes.
A Licensed Product shall be deemed made, used, leased, transferred, sold,
or otherwise disposed of at the time Licensee receives payment for such Licensed
Product.
1.7 "Proprietary and Confidential Information" means all confidential
information or trade secrets owned and/or controlled by Licensee (other than by
license hereunder) relating to the development of phytoremediation technology or
the Licensed Products, including, but not limited to, all information of
Licensee in written, oral, graphic or tangible form relating to the
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design, manufacture, programming, operation, or service of the Licensed
Products, including, but not limited to, any inventions, intellectual property,
know-how, or trade secrets relating thereto, as such information exists as of
the date hereof or is developed by Licensee during the term of this Agreement.
1.8 "Rutgers Patent Rights" means U.S. Patent Application Numbers 94-0809-
1, ▇▇-▇▇▇▇-▇ and ▇▇-▇▇▇▇-▇, U. S. Patents resulting therefrom and foreign
patents and patent applications corresponding thereto owned by Rutgers,
including any reissues, extensions, substitutions, continuations (not including
continuations-in-part) and divisions thereof as well as any additional patents
and patent applications covered by Research Agreement I which are added by
operation of the terms of Article 4 of this Agreement. "Rutgers Patent Rights"
also includes Rutgers' interest in U.S. Patent Application 09/041/355, U.S.
Patent Application numbers 08/621, 138 and 60/027, 127 and all patents issuing
on the foregoing, and all continuations, continuations-in-part, divisions, and
reissues of the foregoing, and all corresponding foreign patents and patent
applications of the foregoing.
1.9 "Territory" means all countries of the world in which Rutgers has
Rutgers Patent Rights, subject to any exclusions provided in this Agreement.
2. GRANT
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2.1 Subject to the limitations set forth in this Agreement, Rutgers hereby
grants to Licensee a semi-exclusive license (terminable only pursuant to the
express terms of this Agreement) under Rutgers' interest in the Rutgers Patent
Rights in the Licensed Field to make,
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have made, use, and sell Licensed Products and to practice Licensed Method in
the Territory during the term of this Agreement. It is mutually agreed that the
preceding license includes the right to use and/or sell Licensed Product outside
of the Territory which is developed and/or manufactured within the Territory.
Licensee shall have the right to extend such license to its Affiliates, provided
Licensee is the primary guarantor of all payment and other obligations hereunder
of its Affiliates. The license for which a royalty has been paid under this
Agreement includes the right of Licensee, its Affiliates or sublicensees to
grant to the purchaser thereof the right to use and/or resell such Licensed
Product without payment of any other royalty hereunder. For purposes of this
Agreement, "semi-exclusive" means that Rutgers may grant one additional license,
with right of sublicense, at any one time in addition to the license granted
hereunder to Licensee. Notwithstanding the foregoing, Rutgers will not grant a
license to a third party during the two (2) year period after the effective date
if Licensee is diligently commercializing the technology licensed hereunder. In
addition, in the event Licensee meet all the diligence requirements specified in
Section 6.4 of this Agreement within the time limits specified in such Section,
then the semi-exclusive license grant shall at the time of completion of the
last of such milestones automatically convert thereafter to an exclusive license
hereunder.
2.2 If the licensed invention(s) were funded by the U.S. Government, the
license granted hereunder shall be subject to the overriding obligations to the
U.S. Government set forth in 35 U. S. C. 200-212 and applicable governmental
implementing regulations.
2.3 Rutgers is permitted to use Rutgers Patent Rights, Licensed Products,
Licensed Methods, and associated information and technology (i) in the Licensed
Field for educational and
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research purposes and to publish the results thereof (ii) and outside the
Licensed Field for any purpose.
3. SUBLICENSES
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3.1 Rutgers grants to Licensee the right to grant sublicenses to third
parties under the license granted in Article 2. To the extent applicable, such
sublicenses shall include all of the rights of and obligations due to Rutgers
(and, if applicable, to the United States Government) that are contained in this
Agreement.
3.2 Within thirty (30) days after execution thereof, Licensee shall
provide Rutgers with a copy of each sublicense issued hereunder, and shall
thereafter collect and, upon receipt of payment from any such sublicensee (s) ,
guarantee payment of royalties due Rutgers from such sublicensees and summarize
and deliver all reports due Rutgers from sublicensees.
3.3 Upon termination of this Agreement for any reason, Rutgers, at its
sole discretion, shall determine whether any or all sublicenses shall be
canceled or assigned to Rutgers. Upon determination by Rutgers that a sublicense
shall be canceled, at the request of sublicensee and absent material reasons not
to continue the sublicense during a transition period, Rutgers will provide the
sublicensee the option to continue the sublicense under the terms of this
Agreement for a phase out period not to exceed one (1) year.
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4. INCORPORATION OF FUTURE RESEARCH AGREEMENT DISCOVERIES
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INTO THIS AGREEMENT
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4.1 If Licensee exercises its Research Agreement option rights to patent
and license any intellectual property rights discovered after the Effective Date
of this Agreement under Research Agreement I, the subject patent rights shall
automatically be added to the definition of Rutgers Patent Rights hereunder and
shall be thereafter deemed to be part of this Agreement.
5. LICENSEE ISSUE FEE, EQUITIES AND ROYALTIES
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5.1 Licensee shall pay a license issue fee to Rutgers of $153, 000 payable
in cash (or by in kind services acceptable to and agreed to by Rutgers) over a
three (3) year period beginning on the execution date of this Agreement. When
Licensee receives cumulative gross income of $1,000,000 from and after the
execution date of this Agreement, any unpaid balance of the license issue fee
shall be accelerated and become immediately due and payable in cash. The license
issue fee is non-refundable and not creditable against future royalty payments
made hereunder.
5.2 Licensee will issue to Rutgers, at no cost to Rutgers, shares of new
stock representing, at time of issue and delivery, 2% of all fully diluted
equity of Licensee plus new stock equivalent to Rutgers' existing shares,
pursuant to a plan of reorganization filed in Licensee's Chapter 11 bankruptcy
case or, if no plan of reorganization is confirmed, upon Licensee's emergence
from Chapter 11. Licensee warrants and represents that when the equity is
delivered to Rutgers (i) it shall be free from any claims, security interests or
liens and (ii) that
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Licensee shall have full right and authority to issue and deliver the equity to
Rutgers. Rutgers shall have no less rights in the equity than any other holders
of any of Licensee's equity.
5.3 Except as otherwise required by law, Licensee shall pay to Rutgers a
running royalty on sales by it, its Affiliates and its sublicensees of 2.5% of
Net Sales of Licensed Products hereunder. Sales among Licensee, its Affiliates
and its sublicensees for ultimate third party use shall be disregarded for
purposes of computing royalties. Royalties shall be payable only upon receipts
from sales or transfers between unrelated third parties and shall be based on
arms length consideration.
5.4 Royalties payable to Rutgers shall be paid to Rutgers quarterly on or
before 35 days following the end of each calendar quarter. Each such payment
will be for royalty payments received within Licensee's most recently completed
calendar quarter.
5.5 All amounts due Rutgers shall be payable in United States Dollars in
New Brunswick, New Jersey. When Licensed Products are sold for monies other than
United States Dollars, the earned royalties will first be determined in the
foreign currency of the country in which such Licensed Products were sold and
then converted into equivalent United States Dollars. The exchange rate will be
the United States Dollar buying rate quoted in the Wall Street Journal on the
last day of the reporting period.
5.6 Licensee shall be responsible for any and all taxes, fees, or other
charges, where such taxes, fees or other charges are imposed by the government
of any country outside the
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United States on the remittance of royalty income for sales occurring in any
such country. Licensee shall also be responsible for all bank transfer charges.
5.7 If at any time legal restrictions prevent the acquisition or prompt
remittance of United States Dollars by Licensee with respect to any country
where a Licensed Product is sold and payment is received, Licensee shall pay
royalties due to Rutgers from Licensee's other sources of United States Dollars.
5.8 In the event that any patent or any claim thereof included within the
Rutgers Patent Rights shall be held invalid in a final decision by a court of
competent jurisdiction and last resort in any country and from which no appeal
has or can be taken, all obligation to pay royalties based on such patent or
claim or any claim patentably indistinct therefrom shall cease as of the date of
such final decision with respect to such country. Licensee shall not, however,
be relieved from paying any royalties that accrued and were paid before such
decision or that are based on another patent or claim not involved in such
decision.
5.9 Royalties will be paid one time only even if a Licensed Product is
covered by more than one issued patent included in the Rutgers Patent Rights.
5.10 Rutgers shall not be entitled to share in any equity investment in
Licensee by a third party as part of a strategic alliance, nor is Rutgers
entitled to any share in revenues received as part of a sponsored research and
development agreement between Licensee and a third party.
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6. DILIGENCE
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6.1 Licensee, upon execution of this Agreement, shall use its reasonable
and diligent efforts to develop, test, obtain regulatory approval, manufacture,
market and sell Licensed Products in all countries of the Territory and shall
earnestly and diligently endeavor to market the same within a reasonable time
after execution of this Agreement and in quantities sufficient to meet the
market demands therefor.
6.2 Licensee shall be entitled to exercise prudent and reasonable business
judgment in meeting its diligence obligations hereunder.
6.3 Licensee shall use all reasonable efforts to obtain all necessary
governmental approvals for the manufacture, use and sale of Licensed Products.
6.4 If Licensee fails to perform any of the following:
(a) apply for any necessary U. S. Government approval to market a
Licensed Product within one (1) year of the effective date of this Agreement,
and
(b) commence commercial sales of a Licensed Product within two (2)
years of the effective date of this Agreement, and
(c) obtain financing adequate to finance two (2) years of its
operations within six (6) months of the effective date of this Agreement,
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then the exclusive license granted hereunder shall automatically revert to a
non-exclusive license at such time as such failure occurs in addition to any
other remedies Rutgers may have.
7. PROGRESS AND ROYALTY REPORTS
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7.1 Beginning January 2, 2000, and annually thereafter, Licensee shall
submit to Rutgers a progress report covering Licensee's activities related to
the development and testing of all Licensed Products and the obtaining of the
governmental approvals necessary for marketing. These progress reports shall be
made for each Licensed Product in each country of the Territory.
7.2 The progress reports submitted under section 7. 1, which may be
presented as a two (2) page report prior to commercial introduction of Licensed
Product, shall include sufficient information (taking into due consideration
that a two (2) page report will contain significantly less detail) to enable
Rutgers to reasonably determine Licensee's progress in fulfilling its
obligations under Article 6, including, but not limited to, the following
topics:
- summary of work completed
- summary of work in progress, including product development and testing
and progress in obtaining government approvals
- current schedule of anticipated events or milestones
- summary of market plans for introduction of Licensed
Products in countries of the Territory in which Licensed Products have not
yet been introduced
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- summary of resources (dollar value) spent in the reporting period for
research, development, and marketing of Licensed Products
- summary of activities in obtaining sublicensees and activities of
sublicensees
- the most recent certified financial statements
7.3 Licensee shall have a continuing responsibility to keep Rutgers
informed of the large/small entity status (as defined by the United States
Patent and Trademark Office) of itself and its sublicensees.
7.4 Licensee shall notify Rutgers of the date of first commercial sale of
each Licensed Product in each country in the first report due after such
commercial introduction.
7.5 After the first commercial sale of a Licensed Product anywhere in the
world, Licensee will make quarterly royalty reports to Rutgers on or before the
date 30 days after each calendar quarter.
7.6 Each such royalty report will show (a) the units and gross sales and
Net Sales of each type of Licensed Product sold by Licensee on which royalties
have not been paid, including a clear indication of how Net Sales were
calculated; (b) the royalties, in U.S. dollars, payable hereunder with respect
to such sales on which payment has been received; Q the method used to calculate
the royalty; and (d) the exchange rates used, if any; and (e) any other
information reasonably requested by Rutgers.
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7.7 If no sales of Licensed Products have been made during any reporting
period, a statement to this effect shall be made by Licensee.
8. BOOKS AND RECORDS
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8.1 Licensee shall keep books and records in accordance with generally
accepted accounting principles accurately showing all transactions and
information relating to this Agreement. Such books and records shall be
preserved for at least five (5) years from the date of the entry to which they
pertain and shall be open to inspection by representatives or agents of Rutgers
at reasonable times upon reasonable notice, but not more often than once
annually.
8.2 The fees and expenses of Rutgers' representatives performing such an
examination shall be borne by Rutgers. However, if an error in royalties of more
than seven and one-half (7 1/2%) percent of the total royalties due for any year
is discovered, or if as a result of the examination it is determined that
Licensee is in material breach of its other obligations under this Agreement,
then the fees and expenses of these representatives shall be borne by Licensee.
9. TERM OF THE AGREEMENT
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9.1 Unless otherwise terminated by operation of law or by acts of the
parties in accordance with the provisions of this Agreement, this Agreement
shall be in force from its Effective Date and shall remain in effect in each
country of the Territory until the last day of the month of the expiration of
the last-to-expire Rutgers Patent Rights licensed under this Agreement in such
country.
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9.2 Any expiration or termination of this Agreement shall not affect the
rights and obligations set forth in the following Articles:
Article 8 Books and Records
Article 11 Disposition of Licensed Products
on Hand Upon Termination
Article 12 Use of Names, Trademarks and
Confidential Data
Article 17 Indemnification
Article 22 Failure to Perform
Article 27 Confidentiality
10. TERMINATION
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10.1 If either party should breach or fail to perform any provision of
this Agreement, then the other party may give written notice of such default
(Notice of Default) to the defaulting party. If the defaulting party should fail
to cure such default within sixty (60) days of the effective date of such
notice, the other party shall have the right to terminate this Agreement and the
licenses herein by a second written notice (Notice of Termination) to the
defaulting party. If a Notice of Termination is sent to defaulting party, this
Agreement shall terminate on the date five (5) days following the receipt of
such notice(Effective Date of Termination). Termination shall not relieve either
party of its obligation to pay all amounts due hereunder as of the Effective
Date of Termination and shall not impair any accrued rights.
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10.2 The Agreement shall terminate in accordance with the procedures
detailed in paragraph 10.1 hereof upon the filing by Licensee of a petition in
bankruptcy or insolvency, or upon any adjudication that the Licensee is bankrupt
or insolvent, or upon the filing by Licensee of any petition or answer seeking
judicial reorganization, readjustment or arrangement of the business of Licensee
under any law relating to bankruptcy or insolvency, or upon the appointment of a
receiver for all or substantially all the property of Licensee, or upon the
making of any assignment or attempted assignment for the benefit of the
creditors.
11. DISPOSITION OF LICENSED PRODUCTS AND INFORMATION
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ON HAND UPON TERMINATION
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11.1 Upon termination of this Agreement by either party (i) Licensee shall
have the privilege of disposing of all previously made or partially made
Licensed Products, but no more, within a period of one hundred and twenty (120)
days after the effective date of termination, provided, however, that the
disposition of such Licensed Products shall 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; (ii)
Licensee shall promptly return, and shall cause its sublicensees to return, to
Rutgers all property belonging to Rutgers, if any, that has been provided to
Licensee or its Affiliates or sublicensees hereunder, and all copies and
facsimiles thereof and derivatives therefrom (except that Licensee may retain
one copy of written material for record purposes only, provided such material is
not used by Licensee for any other purpose and is not disclosed to others).
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12. USE OF NAMES AND TRADEMARKS
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12.1 Nothing contained in this Agreement shall be construed as granting
any right to Licensee or its Affiliates to use in advertising, publicity, or
other promotional activities any name, trade name, trademark, or other
designation of Rutgers or any of its units (including contraction, abbreviation
or simulation of any of the foregoing). Unless required by law or used in
connection with a private or public offering of Licensee's stock or used in any
of Licensee's business agreements, the use of the name, "Rutgers, The State
University of New Jersey" or any campus or unit of Rutgers is expressly
prohibited, and no use of such names may be made in any manner without Rutgers
prior written consent.
13. LIMITED WARRANTY
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13.1 Rutgers warrants to Licensee that it has the lawful right to grant
this license.
13.2 This license and the associated Rutgers Patent Rights are provided
WITHOUT WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY
OTHER WARRANTY, EXPRESS OR IMPLIED. RUTGERS MAKES NO REPRESENTATION OR WARRANTY
THAT THE LICENSED PRODUCTS OR LICENSED METHODS WILL NOT INFRINGE ANY THIRD PARTY
PATENT OR OTHER PROPRIETARY RIGHT.
13.3 IN NO EVENT WILL RUTGERS BE LIABLE FOR ANY INCIDENTAL, SPECIAL OR
CONSEQUENTIAL DAMAGES RESULTING FROM EXERCISE OF THIS
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LICENSE OR MANUFACTURE, SALE, OR USE OF THE RUTGERS PATENT RIGHTS OR LICENSED
PRODUCTS OR LICENSED METHODS OR RUTGERS DATA.
13.4 Nothing in this Agreement shall be construed as:
(13.4a) a warranty or representation by Rutgers regarding the Rutgers
Patent Rights other than the ownership interest of Rutgers
therein; or
(13.4b) a warranty or representation that anything made, used, sold or
otherwise disposed of under any license granted in this Agreement
is or will be free from infringement of patents or other
intellectual property of third parties; or
(13.4c) an obligation to bring or prosecute actions or suits against third
parties except as provided in Article 16; or
(13.4d) conferring by implication, estoppel or otherwise any license or
rights under any patents or other intellectual property of
Rutgers, other than Rutgers Patent Rights as defined herein,
regardless of whether such patents are dominant or subordinate to
Rutgers Patent Rights; or
(13.4e) an obligation to furnish any know-how or Data not provided in
Rutgers Patent Rights.
14. PATENT PROSECUTION AND MAINTENANCE
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14.1 Rutgers shall diligently prosecute and maintain the United States
patents comprising Rutgers Patent Rights using counsel of its choice, or at
Licensee's option, an attorney selected by Licensee subject to Rutgers approval,
which approval shall not be unreasonably
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withheld. Rutgers counsel shall take instructions only from Rutgers, provided
that Rutgers will consult with Licensee prior to instructing counsel on any
significant issues which have been raised by Licensee. Rutgers shall promptly
provide Licensee with copies of all relevant documentation so that Licensee may
be informed and apprised of the continuing prosecution and so that Licensee may
provide input on such prosecution to assure that Licensee's interests are
covered. Licensee agrees to keep this documentation confidential.
14.2 Rutgers shall amend any patent application to include claims
reasonably requested by Licensee to protect the Licensed Products contemplated
to be sold under this Agreement and Rutgers shall not unreasonably withhold
consent to any such request from Licensee to amend any such patent application.
14.3 All past, present, and future costs of preparing, filing,
prosecuting, defending, and maintaining all United States patent applications
and/or patents, including interferences and oppositions, and all corresponding
foreign patent applications and patents covered by Rutgers Patent Rights shall
be borne by Licensee. Current and future costs shall be payable by Licensee
within sixty (60) days of the billing date.
14.4 Rutgers shall, at the request of Licensee, file, prosecute, and
maintain patent applications and patents covered by Rutgers Patent Rights in
foreign countries if available. Licensee consents to the filing of all PCT and
foreign patent applications that have already been filed as of the Effective
Date of this Agreement. Licensee shall notify Rutgers within a reasonable period
of time before a bar date occurs of its decision of where it wishes to file for
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foreign patents so that Rutgers has a reasonable amount of time to prepare and
make such filings. This notice shall be in writing and shall identify the
countries desired.
14.5 Licensee's obligation to underwrite and to pay patent costs shall
continue for so long as this Agreement remains in effect, provided, however,
that Licensee may terminate its obligations with respect to any given patent
application or issued patent upon 3 months' written notice to Rutgers. Rutgers
shall use reasonable efforts to curtail patent costs when such a notice is
received from Licensee. Licensee shall promptly pay patent costs which cannot be
so curtailed. Commencing on the effective date of such notice, Rutgers may
continue prosecution and/or maintenance of such application (s) or patent (s) at
its sole discretion and expense, and Licensee shall have no further right or
licenses thereunder.
14.6 Rutgers shall have the right to file patent applications at its own
expense in any country or countries in which Licensee has not elected to secure
patent rights or in which Licensee's patent license rights hereunder have
terminated, and such applications and resultant issued patents shall not be
subject to this Agreement and may be freely licensed by Rutgers to others.
14.7 With respect to any Rutgers Patent Rights, each patent application,
office action, response to office action, request for terminal disclaimer,
request for reissue or reexamination of any patent issuing from such application
shall be provided to Licensee by Rutgers, or at the direction of Rutgers by
Rutger's patent counsel, sufficiently prior to the filing of such application
response or request to allow for review and comments by Licensee.
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15. PATENT MARKING
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15.1 Licensee shall ▇▇▇▇ all Licensed Products made, used, sold or
otherwise disposed of under the terms of this Agreement, and/or their
containers, in accordance with the applicable patent marking laws.
16. PATENT INFRINGEMENT
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16.1 In the event that Licensee shall learn of the substantial
infringement of any patent licensed under this Agreement, Licensee shall call
Rutgers attention thereto in writing and shall provide Rutgers with reasonable
evidence of such infringement. Both parties to this Agreement agree that during
the period and in a jurisdiction where Licensee has exclusive rights under this
Agreement, neither will notify a third party of the infringement of any of
Rutgers Patent Rights without first obtaining consent of the other party, which
consent shall not be unreasonably withheld. Both parties shall use their best
efforts in cooperation with each other to terminate such infringement without
litigation.
16.2 Licensee may request that Rutgers take legal action against the
infringement of Rutgers Patent Rights. Such request shall be made in writing and
shall include reasonable evidence of such infringement and damages to Licensee.
If the infringing activity has not been abated within 90 days following the
effective date of such request, Rutgers shall have the right to
(16.2a) commence suit on its own account; or
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(16.2b) refuse to commence such suit;
and Rutgers shall give notice of its election in writing to Licensee by the end
of the 100th day after receiving notice of such request from Licensee. If
Rutgers commences suit on its own account, Licensee may thereafter join such
suit at its own expense. If Rutgers refuses to commence suit, Licensee may
thereafter bring suit for patent infringement if and only if Rutgers elects not
to commence suit and if the infringement occurred during the period and in a
jurisdiction where Licensee had exclusive rights under this Agreement. However,
if Licensee elects to bring suit in accordance with this paragraph, Rutgers may
thereafter join such suit at its own expense.
16.3 Such legal action as is decided upon shall be at the expense of the
party on account of whom suit is brought and all recoveries recovered thereby
shall belong to such party, provided, however, that recoveries from legal
actions brought jointly by Rutgers and Licensee shall be shared equally by them,
after paying the reasonable legal expenses of both parties.
16.4 Each party agrees to cooperate with the other in litigation
proceedings instituted hereunder but at the expense of the party on account of
whom suit is brought. Such litigation shall be controlled by the party bringing
the suit. Each party may be represented by counsel of its choice.
16.5 Rutgers will permit Licensee to bring suit in the name of Rutgers
where required by law.
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17. INDEMNIFICATION AND INSURANCE
-----------------------------
17.1 Licensee shall indemnify, hold harmless and defend Rutgers, its
governors, trustees, officers, employees, students, agents and the Inventors
against any and all claims, suits, losses, liabilities, damages, costs, fees and
expenses (including reasonable attorneys' fees) resulting from or arising out of
the exercise of this license or any sublicense. This indemnification shall
include, but is not limited to, any and all claims alleging products liability.
17.2 Licensee shall, throughout the term of this Agreement, at its sole
cost and expense, insure its activities in connection with this Agreement and
will maintain and keep in force the following types of insurance:
(a) Comprehensive or Commercial General Liability with minimum
limits as follows:
(i) ______________/1/ combined single limit as respects premises
and operations with an excess policy of ________________/2/
where required;
_________________________
/1/ Pursuant to Rule 24b-2 of the Securities and Exchange Act of 1934, the
confidential material has been omitted and filed separately with the Securities
and Exchange Commission.
/2/ Pursuant to Rule 24b-2 of the Securities and Exchange Act of 1934, the
confidential material has been omitted and filed separately with the Securities
and Exchange Commission.
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(ii) From and after the first commercial sale of a
Licensed Product, Licensee shall maintain
appropriate levels of comprehensive or commercial
general liability coverage, as agreed to by the
parties, which shall include, but not be limited
to, products/completed operations liability. In
the determination of appropriate level of such
insurance, the parties shall take into
consideration the nature of the Licensed Product
sold, the size of the market, the availability of
insurance at commercially reasonable rates and the
practices of comparable competitors of Licensee
using similar technology. Licensee will notify
Rutgers at least 120 days prior to first
commercial sale of proposed coverages and
documentation on explaining its rationale. The
parties will thereafter discuss and agree upon
final coverages to be taken. Further, such
appropriate levels of insurance are subject to
periodic review by the parties.
(b) Workers' Compensation and Employers Liability
insurance, covering each employee of the Licensee
engaged in the performance of the action required under
the contract, with a limit of liability in accordance
with applicable law, in the case of workers'
compensation insurance, and with the following limits
of liability in the case of employers' liability:
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Bodily injury by accident - ___________/3/ each accident;
Bodily injury by disease - ___________/4/ policy limit;
Bodily injury by disease - ___________/5/ each employee.
(c) It is expressly understood and agreed, however, that the
insurance coverage and limits stated in A and B above shall not
in any way limit the liability of Licensee and that the required
insurance shall be primary coverage. Any insurance Rutgers may
purchase will be excess and noncontributory. Licensee's
liability insurance will be endorsed to specifically name Rutgers
as an additional insured.
(d) Licensee shall furnish Rutgers with a certificate of insurance
evidencing the coverage and limits required pursuant to A and B
above. The liability certificate shall:
(i) Provide for thirty (30) day advance written notice to
Rutgers of cancellation or material alteration of the
policy;
_________________________
/3/ Pursuant to Rule 24b-2 of the Securities and Exchange Act of 1934, the
confidential material has been omitted and filed separately with the Securities
and Exchange Commission.
/4/ Pursuant to Rule 24b-2 of the Securities and Exchange Act of 1934, the
confidential material has been omitted and filed separately with the Securities
and Exchange Commission.
/5/ Pursuant to Rule 24b-2 of the Securities and Exchange Act of 1934, the
confidential material has been omitted and filed separately with the Securities
and Exchange Commission.
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(ii) Indicate that Rutgers has been endorsed as an additional
insured under the coverages referred to above;
(iii) Include a provision that the insurance will be primary and
any valid and collectible insurance or program of self-
insurance carried or maintained by Rutgers shall be excess
and noncontributory.
17.3 Rutgers shall promptly notify Licensee in writing of any claim or
suit brought against Rutgers in respect of which Rutgers intends to invoke the
provisions of Article 17. Licensee shall keep Rutgers informed on a current
basis of its defense of any claims pursuant to Article 17.
18. NOTICES
-------
18.1 Any notice or payment required to be given to either party shall be
deemed to have been properly given and to be effective (a) on the date of
delivery if delivered in person or (b) five (5) days after mailing if mailed by
first-class certified mail, postage paid and deposited in the United States
mail, to the respective addresses given below, or to such other address as it
shall designate by written notice given to the other party.
In the case of Licensee: Nucycle Therapy, Inc.
▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: President
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In the case of Rutgers: Rutgers, The State University of New Jersey
Office of Corporate Liaison & Technology Transfer
▇▇ ▇▇▇▇▇▇ ▇▇▇▇
ASB Annex II
Piscataway, NJ 08854-8010
Attention: Director
19. ASSIGNABILITY
-------------
19.1 This Agreement is binding upon and shall inure to the benefit of
Rutgers and Licensee, and their successors and assigns Any such successor or
assignee shall expressly assume in writing the terms and conditions and
obligations of this Agreement. This Agreement shall not be assignable by either
of the parties without the prior written consent of the other party (which
consent shall not be unreasonably withheld), except that Licensee, without the
consent of Rutgers, may assign this Agreement to an Affiliate, provided that
Licensee is the primary guarantor of all Agreement payment and other obligations
of the Affiliate related to an assignment of this Agreement to such Affiliate.
20. LATE PAYMENTS
-------------
20.1 In the event any amounts due Rutgers hereunder, including but not
limited to royalty payments, fees and patent cost reimbursements, are not
received when due, Licensee shall pay to Rutgers interest charges at a rate of
the greater of (1) 12 percent per annum or (ii) the
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highest rate permitted by law, if less than the rate referred to in (I) above.
Such interest shall be calculated from the date payment was due until actually
received by Rutgers.
21. WAIVER
------
21.1 It is agreed that no waiver by either party hereto of any breach or
default of any of the covenants or agreements herein set forth shal1 be deemed
a waiver as to any subsequent and/or similar breach or default.
22. FAILURE TO PERFORM
------------------
22.1 In the event of a failure of performance due under the terms of this
Agreement and if it becomes necessary for either party to undertake legal action
against the other on account thereof, then the prevailing party shall be
entitled to reasonable attorney's fees in addition to costs and necessary
disbursements.
23. GOVERNING LAWS
--------------
23.1 THIS AGREEMENT SHALL BE INTERPRETED AND CONSTRUED IN ACCORDANCE WITH
THE LAWS OF THE STATE OF NEW JERSEY, but the scope and validity of any patent or
patent application shall be governed by the applicable laws of the country of
such patent or patent application.
24. PREFERENCE FOR UNITED STATES INDUSTRY
-------------------------------------
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24.1 If the U.S. Government sponsored an invention included in the Rutgers
Patent Rights in whole or in part, Licensee agrees that any Licensed Products
sold in the United States embodying this invention or produced through the use
thereof will be manufactured substantially in the United States.
25. FOREIGN GOVERNMENT APPROVAL OR REGISTRATION
-------------------------------------------
25.1 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 shall assume all legal obligations to do so and the costs in
connection therewith.
26. EXPORT CONTROL LAWS
-------------------
26.1 Licensee shall observe all applicable United States and foreign laws
with respect to the transfer of Licensed Products and related technical data to
foreign countries, including, without limitation, the International Traffic in
Arms Regulations (ITAR) and the Export Administration Regulations,
27. CONFIDENTIALITY
---------------
27.1 Licensee shall safeguard and keep confidential Data against
disclosure to others with the same degree of care as it exercises with its own
data of a similar nature, and shall not disclose or permit the disclosure of
Data to others (except to its employees, agents or consultants who are bound to
Licensee and Rutgers by a like obligation of confidentiality) without the
-29-
express written permission of Rutgers, except that Licensee shall not be
prevented from using or disclosing
(27 la) which Licensee can demonstrate by written records was
previously known to it; or
(27.1b) which is now, or becomes in the future, information
generally available to the public in the form supplied,
other than through acts or omissions of Licensee; or
(27.1c) which is lawfully obtained by Licensee from sources
independent of Rutgers who were entitled to provide such
information to Licensee.
27.2 Rutgers shall safeguard and keep confidential Proprietary and/or
Confidential Information relating to Licensed Products which is owned or
controlled by Licensee and disclosed to Rutgers hereunder in writing or if oral,
if confirmed in writing within a reasonable time after disclosure. Rutgers shall
use the same degree of care in safeguarding the information as it exercises with
its own information of a similar nature, and shall not disclose or permit the
disclosure of such information to others (except to its employees, agents or
consultants who are bound to Licensee and Rutgers by a like obligation of
confidentiality) without the express written permission of Licensee, except that
Rutgers shall not be prevented from using or disclosing any such information:
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(27.2a) which Rutgers can demonstrate by written records was
previously known to it; or
(27.2b) which is now, or becomes in the future, information
generally available to the public in the form supplied,
other than through acts or omissions of Rutgers; or
(27.2c) which is lawfully obtained by Rutgers from sources
independent of Licensee who were entitled to provide such
information to Rutgers. The obligations of the parties
under this Article 27 shall remain in effect during the
term of this Agreement and f or 5 years from the date of
termination or expiration of this Agreement.
28. MISCELLANEOUS
-------------
28.1 The headings of the several articles are inserted for convenience of
reference only and are not intended to be a part of or to affect the meaning or
interpretation of this Agreement.
28.2 This Agreement will not be binding upon the parties until it has been
signed below on behalf of each party, in which event, it shall be effective as
of the Effective Date.
28.3 No amendment or modification hereof shall be valid or binding upon
the parties unless made in writing and signed on behalf of each party.
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28.4 This Agreement embodies the entire understanding of the parties and
shall supersede all communications, representations or understandings, either
oral or written, between the parties relating to the subject matter hereof.
28.5 In case any of the provisions contained in this Agreement shall be
held to be invalid, illegal or unenforceable in any respect, such invalidity,
illegality or unenforceability shall not affect any other provisions hereof, but
this Agreement shall be construed as if such invalid or illegal or unenforceable
provisions had never been contained herein.
28.6 Licensee shall not enter into any agreement (s) relating to this
Agreement with Inventors or other Rutgers employees or students in contravention
of the legal rights or policies of Rutgers.
IN WITNESS WHEREOF, both Rutgers and Licensee have executed this Agreement,
in duplicate originals, by their duly authorized representatives on the day and
year hereinafter written.
Nucycle Therapy, Inc. Rutgers, The State University
of New Jersey
By /s/▇▇▇▇ ▇▇▇▇▇▇ By: /s/▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
--------------------- ------------------------
(Signature) (Signature)
Name: ▇▇▇▇ ▇▇▇▇▇▇ Name ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
Director
Office of Corporate Liaison and
Technology Transfer
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