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EXHIBIT 10.36
EXCLUSIVE LICENSE AGREEMENT
between
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
and
XXSYS TECHNOLOGIES INC.
for
"RETROFIT AND REPAIR OF CONCRETE AND MASONRY WALLS
WITH CARBON OVERLAYS",
UCSD CASE SD96-103
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UC Case No. SD 96-103
EXCLUSIVE LICENSE AGREEMENT
for
This License Agreement (the "Agreement") is made effective the date of
last signature (the "Effective Date") between THE REGENTS OF THE UNIVERSITY OF
CALIFORNIA, a California corporation having its statewide administrative offices
at ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇, ("The
Regents"), on behalf of the University of California, San Diego campus, and
XXSYS TECHNOLOGIES INC., a California corporation having a principal place of
business at ▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇ (the "Licensee").
BACKGROUND
1. Certain inventions, generally characterized as SD 96-103: "Retrofit
and Repair of Concrete and Masonry Walls with Carbon Overlays", which is the
subject of U.S. Patent Application No. 08/667,916 and attached here as Exhibit
A, (collectively the "Invention"), were made in the course of research at the
University of California, by ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ and ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ and are covered
by Regents' Patent Rights as defined below;
2. The Licensee has evaluated the Invention under a Secrecy Agreement
with The Regents (SD Control No. 96-20-0074);
3. The Licensee wishes to obtain rights from The Regents for the
commercial development, use, and sale of products from the Invention, and The
Regents is willing to grant those rights so that the Invention may be developed
to its fullest and the benefits enjoyed by the general public; and
4. The Licensee is a "small business firm" as defined in 15 U.S.C. 632;
5. Both parties recognize and agree that royalties due under this
Agreement will be paid on both pending patent applications and issued patents;
6. This work was supported with federal funding from ARPA contract MDA
972-943-0030 and NSF grant MSS 90-24976.
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In view of the foregoing, the parties agree:
1. DEFINITIONS
1.1 "Regents' Patent Rights" means any subject matter claimed in or
covered by any of the following: any pending or issued United States patent
based on and claiming the INVENTION of SD96-103, together with continuing
applications thereof including divisions and substitutions but
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excluding continuation-in-part applications claiming new matter developed by The
Regents, except to the extent enabled by the parent case; any patents issuing on
said applications including reissues, reexaminations and extensions; and any
corresponding foreign applications or patents.
1.2 "Licensed Product" means any material that is either covered by
Regents' Patent Rights, that is produced by the Licensed Method, or the use of
which would constitute, but for the license granted to the Licensee under this
Agreement, an infringement of any pending or issued claim within Regents' Patent
Rights.
1.3 "Licensed Method" means any method that is covered by Regents'
Patent Rights, or the use of which would constitute, but for the license granted
to the Licensee under this Agreement, an infringement of any pending or issued
claim within Regents' Patent Rights.
1.4 "Net Sales" means the total of the gross invoice prices of Licensed
Products sold by the Licensee, an Affiliate, or a sublicensee, 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 imposed on particular sales; transportation charges and allowances; or
credits to customers because of rejections or returns or deductions for products
or services not associated with the Licensed Products. For purposes of
calculating Net Sales, transfers to an affiliate or sublicensee for end use by
the affiliate or sublicensee will be treated as sales at list price.
1.5 "Affiliate" means any corporation or other business entity in which
the Licensee owns or controls, directly or indirectly, at least fifty percent
(50%) of the outstanding stock or other voting rights entitled to elect
directors, or in which the Licensee is owned or controlled directly or
indirectly by at least 50% of the outstanding stock or other voting rights
entitled to elect directors; but in any country where the local law does not
permit foreign equity participation of at least 50%, then an "Affiliate"
includes any company in which the Licensee owns or controls or is owned or
controlled by, directly or indirectly, the maximum percentage of outstanding
stock or voting rights permitted by local law.
1.6 "Field of Use" means the construction, retrofit, repair, or
reinforcement of reinforced or unreinforced cementitious or masonry walls or
other structures.
2. LIFE OF PATENT EXCLUSIVE GRANT
2.1 Subject to the limitations set forth in this Agreement, The Regents
grants to the Licensee a world-wide license under Regents' Patent Rights to
make, have made, use, and sell Licensed Products and to practice Licensed
Methods.
2.2 Except as otherwise provided in this Agreement, the license granted
in Paragraph 2.1 is exclusive for the life of the Agreement.
2.3 The license granted in Paragraphs 2.1 and 2.2 is subject to all the
applicable provisions of any license to the United States Government executed by
The Regents and is subject to the overriding obligations to the U. S. Government
under 35 U.S.C. 200-212 and applicable governmental implementing regulations.
2.4 The licenses granted in Paragraphs 2.1 and 2.2 are limited to
methods and products that are within the Field of Use. For other methods and
products, the Licensee has no license under this Agreement.
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2.5 The Regents reserves the right to use the Invention and associated
technology for educational and research purposes.
3. SUBLICENSES
3.1 The Regents also grants to the Licensee the right to issue
sublicenses to third parties to make, have made, use, and sell Licensed Products
and to practice Licensed Methods, as long as the Licensee has current exclusive
rights thereto under this Agreement. To the extent applicable, sublicenses must
include all of the rights of and obligations due to The Regents (and, if
applicable, the United States Government) and contained in this Agreement.
3.2 The Licensee shall promptly provide The Regents with a copy of each
sublicense issued; and shall use best efforts to collect all payments due The
Regents from sublicensees; and summarize and deliver all reports due The Regents
from sublicensees.
3.3 Upon termination of this Agreement for any reason, any sublicenses
shall remain in effect and shall be assigned to The Regents, provided that: the
Licensee was not in breach of this Agreement when entering into the sublicense;
the sublicensee is not in breach of its sublicense at the time of the
termination of this Agreement; the rights of The Regents in the sublicense are
no less than the rights of The Regents hereunder; the obligations of The Regents
in the sublicense are no greater than the obligations of The Regents hereunder;
and the obligations of the sublicensee are no less than those of the Licensee
hereunder.
4. PAYMENT TERMS
4.1 Paragraphs 1.1, 1.2, and 1.3 define Regents' Patent Rights,
Licensed Products and Licensed Methods so that royalties are payable on products
and methods covered by both pending patent applications and issued patents.
Royalties will accrue in each country for the duration of Regents' Patent Rights
in that country and are payable to The Regents when Licensed Products' invoices
are collected. The Licensee shall use best efforts to collect on all invoices.
4.2 Licensee shall pay earned royalties quarterly on or before February
28, May 31, August 31 and November 30 of each calendar year. Each payment will
be for earned royalties accrued within the Licensee's most recently completed
calendar quarter.
4.3 All monies due The Regents are payable in United States dollars.
When Licensed Products are sold for monies other than United States dollars,
Licensee shall first determine the earned royalty in the currency of the country
in which Licensed Products were sold and then convert the amount into equivalent
United States funds, using the exchange rate quoted in the Wall Street Journal
on the last business day of the reporting period.
4.4 Royalties earned on sales occurring in any country outside the
United States may not be reduced by any taxes, fees, or other charges imposed by
the government of such country on the payment of royalty income. The Licensee is
also responsible for all bank transfer charges. Notwithstanding this, all
payments made by the Licensee in fulfillment of The Regents' tax liability in
any particular country will be credited against earned royalties or fees due The
Regents for that country.
4.5 If at any time legal restrictions prevent the prompt remittance of
royalties by the Licensee from any country where a Licensed Product is sold, the
Licensee shall convert the
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amount owed to The Regents into United States funds and shall pay The Regents
directly from its U.S. source of funds for as long as the legal restrictions
apply.
4.6 If any patent or patent claim within The Regents' Patent Rights is
held invalid in a final decision by a court of competent jurisdiction and last
resort and from which no appeal has or can be taken, all obligation to pay
royalties based on that patent or claim or any claim patentably indistinct
therefrom will cease as of the date of final decision.
4.7 No royalties may be collected or paid on Licensed Products sold to
the account of the U.S. Government, or any agency thereof, as provided for in
the License to the Government.
4.8 In the event payments, rebilling or fees are not received by The
Regents when due, the Licensee shall pay to The Regents interest charges at a
rate of ten (10) percent per annum. Interest is calculated from the date payment
was due until actually received by The Regents.
5. LICENSE-ISSUE FEE AND EQUITY ISSUANCE
5.1 The Licensee shall pay to The Regents a LICENSE ISSUE FEE of Twenty
Five Thousand Dollars ($25,000.00). The License Issue Fee shall be received by
The Regents no later than June 30, 1997.
5.2 Licensee shall issue Fourteen Thousand Three Hundred Seventy Five
(14,374) shares of XXSYS TECHNOLOGIES, INC. (ticker symbol: XSYS) common stock
to the Regents, and Five Thousand Three Hundred Thirteen (5,313) shares of
common stock to each the University of California San Diego inventors ▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇ and ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ within no later than one hundred twenty (120) days
after the Effective Date. Shares will be issued according to the rules and
conditions of Securities and Exchange Commission Rule 144, such that the shares
may be sold one (1) year after issuance from Licensee, provided that proper
notice of sale is filed on Form 144 with the Securities and Exchange Commission,
and the sale of the shares is properly transacted.
6. LICENSE MAINTENANCE FEE (MILESTONES)
The Licensee shall also pay to The Regents a royalty in the form of
LICENSE MAINTENANCE FEE of Ten Thousand Dollars ($10,000) beginning on August
31, 1998 and continuing annually on each anniversary of the Effective Date. The
maintenance fee is not due on any anniversary of this Agreement if on that date
Licensee is commercially selling Licensed Product and paying an earned royalty
of any amount to The Regents on the sales of that Licensed Product. License
maintenance fees are non-refundable and not an advance against earned royalties.
7. EARNED ROYALTIES AND MINIMUM ANNUAL ROYALTIES
7.1 The Licensee shall also pay to The Regents an EARNED ROYALTY of one
and one half percent (1.5%) of the Net Sales of Licensed Products.
7.2 The Licensee shall pay to The Regents a MINIMUM ANNUAL ROYALTY of
Ten Thousand Dollars ($10,000) due on August 31, 1999, and Fifteen Thousand
Dollars ($15,000) on February 28, 2000 and each year thereafter for the life of
Regents' Patent Rights. For the first year of commercial sales, the Licensee's
obligation to pay the minimum annual royalty will be pro-rated for the number of
months remaining in that calendar year when commercial sales commence and will
be due the following February 28, to allow for crediting of the pro-rated year's
earned
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royalties. For subsequent years, the minimum annual royalty will be paid to The
Regents by February 28 of each year and will be credited against the earned
royalty due for the calendar year in which the minimum payment was made.
8. DUE DILIGENCE
8.1 The Licensee, on execution of this Agreement, shall diligently
proceed with the development, manufacture and sale of Licensed Products 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
market demands.
8.2 The Licensee shall endeavor to obtain all necessary governmental
approvals for the manufacture, use and sale of Licensed Products.
8.3 The Licensee shall:
8.3.1 market Licensed Products by June 1998;
8.3.2 obtain the necessary regulatory approvals in order to
introduce the Licensed Products in the state of California by
June 30, 2000; and
8.3.3 use best efforts to reasonably fill the market demand for
Licensed Products following commencement of marketing at any
time during the exclusive period of this Agreement.
If the Licensee is unable to perform any of the above provisions, then The
Regents has the right and option to either terminate this Agreement or reduce
the Licensee's exclusive license to a nonexclusive license. This right, if
exercised by The Regents, supersedes the rights granted in Article 2 (GRANT).
8.4 In addition to the obligations set forth above, the Licensee shall
spend an aggregate of not less than One Hundred Thousand Dollars ($100,000.00)
for the development (including testing, standards development and obtaining
approvals) of Licensed Products during the first two years of this Agreement.
9. PROGRESS AND ROYALTY REPORTS
9.1. Beginning February 28, 1998 and semi-annually thereafter, the
Licensee shall submit to The Regents a progress report of no more than five (5)
pages, covering the Licensee's (and any Affiliate or sublicensee's) activities
related to the development and testing of all Licensed Products and the
obtaining of the governmental approvals necessary for marketing. Progress
reports are required for each Licensed Product until the first commercial sale
of that Licensed Product occurs in the United States.
9.2 Progress reports submitted under section 7.1 should include, but are
not limited to, the following topics:
- summary of work completed
- key scientific discoveries
- summary of work in progress
- current schedule of anticipated events or milestones
- market plans for introduction of Licensed Products, and
- a summary of resources (dollar value) spent in the reporting
period.
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9.3 The Licensee has a continuing responsibility to keep The Regents
informed of the large/small business entity status (as defined by the United
States Patent and Trademark Office) of itself and its sublicensees and
Affiliates.
9.4 The Licensee shall report to The Regents in its immediately
subsequent progress and royalty report the date of first commercial sale of a
Licensed Product in each country.
9.5 After the first commercial sale of a Licensed Product anywhere in
the world, the Licensee shall make quarterly royalty reports to The Regents on
or before each February 28, May 31, August 31 and November 30 of each year.
Each royalty report will cover the Licensee's most recently completed calendar
quarter and will show (a) the gross sales and Net Sales of Licensed Products
sold during the most recently completed calendar quarter; (b) the number of each
type of Licensed Product sold; (c) the royalties, in U.S. dollars, payable with
respect to sales of Licensed Products; (d) the method used to calculate the
royalty; and (e) the exchange rates used.
9.6 If no sales of Licensed Products have been made during any reporting
period, a statement to this effect is required.
10. BOOKS AND RECORDS
10.1 The Licensee shall keep accurate books and records showing all
Licensed Products manufactured, used, and/or sold under the terms of this
Agreement. Books and records must be preserved for at least five (5) years from
the date of the royalty payment to which they pertain.
10.2 Books and records must be open to inspection by representatives or
agents of The Regents at reasonable times. The Regents shall bear the fees and
expenses of examination but if an error in royalties of more than five percent
(5%) of the total royalties due for any year is discovered in any examination
then Licensee shall bear the fees and expenses of that examination.
11. LIFE OF THE AGREEMENT
11.1 Unless otherwise terminated by 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 until the last-to-expire patent licensed under
this Agreement; or until the last patent application licensed under this
Agreement is abandoned and no patent in Regents' Patent Rights ever issues.
11.2 Any termination of this Agreement will not affect the rights and
obligations set forth in the following Articles:
Article 10 Books and Records
Article 14 Disposition of Licensed Products on Hand on Termination
Article 15 Use of Names and Trademarks
Article 20 Indemnification
Article 24 Failure to Perform
Article 29 Secrecy
12. TERMINATION BY THE REGENTS
If the Licensee fails to perform or violates any term of this Agreement,
then The Regents may give written notice of default (Notice of Default) to the
Licensee. If the Licensee fails to repair the default within sixty (60) days of
the effective date of Notice of Default, The Regents
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may terminate this Agreement and its licenses by a second written notice (Notice
of Termination). If a Notice of Termination is sent to the Licensee, this
Agreement will automatically terminate on the effective date of that notice.
Termination will not relieve the Licensee of its obligation to pay any fees
owing at the time of termination and will not impair any accrued right of The
Regents. These notices are subject to Article 19 (Notices).
13. TERMINATION BY LICENSEE
13.1 The Licensee has the right at any time to terminate this Agreement
in whole or as to any portion of Regents' Patent Rights by giving notice in
writing to The Regents. Notice of termination will be subject to Article 21
(Notices) and termination of this Agreement will be effective ninety (90) days
from the effective date of notice.
13.2 Any termination under the above paragraph does not relieve the
Licensee of any obligation or liability accrued under this Agreement prior to
termination or rescind any payment made to The Regents or anything done by
Licensee prior to the time termination becomes effective. Termination does not
affect in any manner any rights of The Regents arising under this Agreement
prior to termination.
14. DISPOSITION OF LICENSED PRODUCTS ON HAND UPON TERMINATION
Upon termination of this Agreement the Licensee is entitled to dispose
of all previously made or partially made Licensed Products, but no more, within
a period of one hundred and twenty (120) days provided that the sale of those
Licensed Products is subject to the terms of this Agreement, including but not
limited to the rendering of reports and payment of royalties required under this
Agreement.
15. USE OF NAMES AND TRADEMARKS
Nothing contained in this Agreement confers any right to use in
advertising, publicity, or other promotional activities any name, trade name,
trademark, or other designation of either party hereto (including contraction,
abbreviation or simulation of any of the foregoing). Unless required by law, the
use by the Licensee of the name, "The Regents of the University of California"
or the name of any campus of the University of California is prohibited.
16. LIMITED WARRANTY
16.1 The Regents warrants to the 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, EXPRESS OR IMPLIED. THE REGENTS MAKES NO REPRESENTATION OR WARRANTY
THAT THE LICENSED PRODUCTS OR LICENSED METHODS WILL NOT INFRINGE ANY PATENT OR
OTHER PROPRIETARY RIGHT.
16.3 IN NO EVENT MAY THE REGENTS BE LIABLE FOR ANY INCIDENTAL, SPECIAL
OR CONSEQUENTIAL DAMAGES RESULTING FROM EXERCISE OF THIS LICENSE OR THE USE OF
THE INVENTION OR LICENSED PRODUCTS.
16.4 Nothing in this Agreement:
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16.4.1 is a warranty or representation by The Regents as to the
validity or scope of any Regents' Patent Rights;
16.4.2 is 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 of third parties;
16.4.3 is an obligation to bring or prosecute actions or suits
against third parties for patent infringement except as
provided in Article 19;
16.4.4 confers by implication, estoppel or otherwise any license
or rights under any patents of The Regents other than
Regents' Patent Rights as defined in this Agreement,
regardless of whether those patents are dominant or
subordinate to Regent's Patent Rights; or
16.4.5 is an obligation to furnish any know-how not provided in
Regents' Patent Rights.
17. PATENT PROSECUTION AND MAINTENANCE
17.1 As long as the Licensee has paid patent costs as provided for in
Paragraph 17.5, The Regents shall diligently endeavor to prosecute and maintain
the United States and foreign patents comprising Regents' Patent Rights using
counsel of its choice, and The Regents shall provide the Licensee with copies of
all relevant documentation so that the Licensee may be informed of the
continuing prosecution and the Licensee agrees to keep this documentation
confidential. The Regents' counsel will take instructions only from The Regents,
and all patents and patent applications under this Agreement will be assigned
solely to The Regents.
17.2 The Regents shall use all reasonable efforts to amend any patent
application to include claims reasonably requested by the Licensee to protect
the products contemplated to be sold under this Agreement.
17.3 The Licensee shall bear the costs of preparing, filing, prosecuting
and maintaining all United States and foreign patent applications contemplated
by this Agreement. Costs billed by The Regents' counsel will be rebilled to the
Licensee without markup and are due within 30 days of rebilling by The Regents.
These costs include patent prosecution costs for the Invention incurred by The
Regents prior to the execution of this Agreement and any patent prosecution
costs that may be incurred for patentability opinions, re-examination, re-issue,
interferences, or inventorship determinations. Prior costs will be due on
execution of this Agreement and billing by The Regents. Prior costs are
approximately Six Thousand Five Hundred Dollars ($6,500).
17.4 The Licensee may request The Regents to obtain patent protection on
the Invention in foreign countries if available and if it so desires. The
Licensee shall notify The Regents of its decision to obtain or maintain foreign
patents not less than sixty (60) days prior to the deadline for any payment,
filing, or action to be taken in connection therewith. This notice concerning
foreign filing must be in writing, must identify the countries desired, and must
reaffirm the Licensee's obligation to underwrite the costs thereof. The absence
of such a notice from the Licensee to The Regents will be considered an election
not to obtain or maintain foreign rights.
17.5 The Licensee's obligation to underwrite and to pay patent
prosecution costs will continue for so long as this Agreement remains in effect,
but the Licensee may terminate its obligations with respect to any given patent
application or patent upon three (3) months written
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notice to The Regents. The Regents will use its best efforts to curtail patent
costs when a notice of termination is received from the Licensee. The Regents
may prosecute and maintain such application(s) or patent(s) at its sole
discretion and expense, but the Licensee will have no further right or licenses
thereunder. Non-payment of patent costs may be deemed by The Regents as an
election by the Licensee not to maintain application(s) or patent(s).
17.6 The Regents may file, prosecute or maintain patent applications at
its own expense in any country in which the Licensee has not elected to file,
prosecute, or maintain patent applications in accordance with this Article, and
those applications and resultant patents will not be subject to this Agreement.
18. PATENT MARKING
The Licensee shall ▇▇▇▇ all literature and documentation for Licensed
Products made, used or sold under the terms of this Agreement, or their
containers, in accordance with the applicable patent marking laws.
19. PATENT INFRINGEMENT
19.1 If the Licensee learns of the substantial infringement of any patent
licensed under this Agreement, the Licensee shall call The Regents' attention
thereto in writing and provide The Regents with reasonable evidence of
infringement. Neither party will notify a third party of the infringement of any
of Regents' Patent Rights without first obtaining consent of the other party,
which consent will not be unreasonably denied. Both parties shall use their best
efforts in cooperation with each other to terminate infringement without
litigation.
19.2 The Licensee may request that The Regents take legal action against
the infringement of Regents' Patent Rights. Request must be in writing and must
include reasonable evidence of infringement and damages to the Licensee. If the
infringing activity has not abated within ninety (90) days following the
effective date of request, The Regents then has the right to:
19.2.1 commence suit on its own account; or
19.2.2 refuse to participate in the suit,
and The Regents shall give notice of its election in writing to the Licensee by
the end of the one-hundredth (100th) day after receiving notice of written
request from the Licensee. The Licensee may thereafter bring suit for patent
infringement, at its own expense, if and only if The Regents elects not to
commence suit and if the infringement occurred during the period and in a
jurisdiction where the Licensee had exclusive rights under this Agreement. If,
however, the Licensee elects to bring suit in accordance with this paragraph,
The Regents may thereafter join that suit at its own expense.
19.3 Legal action as is decided on will be at the expense of the party
bringing suit and all recoveries recovered thereby will belong to the party
bringing suit, but legal action brought jointly by The Regents and the Licensee
and fully participated in by both will be at the joint expense of the parties
and all recoveries will be shared jointly by them in proportion to the share of
expense paid by each party.
19.4 Each party shall cooperate with the other in litigation proceedings
instituted hereunder but at the expense of the party bringing suit. Litigation
will be controlled by the party
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bringing the suit, except that The Regents may be represented by counsel of its
choice in any suit brought by the Licensee.
20. INDEMNIFICATION
20.1 The Licensee shall indemnify, hold harmless and defend The Regents,
its officers, employees, and agents; the sponsors of the research that led to
the Invention; and the inventors of the patents and patent applications in
Regents' Patent Rights and their employers against any and all claims, suits,
losses, damage, costs, fees, and expenses resulting from or arising out of
exercise of this license or any sublicense. This indemnification includes, but
is not limited to, any product liability.
20.2 The Licensee, at its sole cost and expense, shall insure its
activities in connection with the work under this Agreement and obtain, keep in
force and maintain insurance as follows, or an equivalent program of self
insurance:
Comprehensive or commercial form general liability insurance (contractual
liability included) with limits as follows:
- Each Occurrence $1,000,000
- Products/Completed Operations Aggregate $2,000,000
- Personal and Advertising Injury $1,000,000
- General Aggregate (commercial form only) $2,000,000
The coverage and limits referred to under the above do not in any way
limit the liability of the Licensee. The Licensee shall furnish The Regents with
certificates of insurance showing compliance with all requirements. Certificates
must:
- Provide for thirty (30) day advance written notice to
The Regents of any modification.
- Indicate that The Regents has been endorsed as an
additional Insured under the coverage referred to under
the above.
- 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 carried or maintained by The Regents.
20.3 The Regents shall notify the Licensee in writing of any claim or
suit brought against The Regents in respect of which The Regents intends to
invoke the provisions of this Article. The Licensee shall keep The Regents
informed on a current basis of its defense of any claims under this Article.
20.4 The Licensee agrees to purchase additional insurance coverage, such
that the Products/Completed Operations Aggregate shall be no less than
$5,000,000, no later than June 1, 2002.
21. NOTICES
Any notice or payment required to be given to either party is properly
given and 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, to the respective addresses given below, or to another address as is
designated by written notice given to the other party.
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In the case of the Licensee: Dr. Gloria Ma
XXSYS TECHNOLOGIES INC.
▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
In the case of The Regents: THE REGENTS OF THE UNIVERSITY
OF CALIFORNIA
▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
Technology Transfer ▇▇▇▇▇▇
▇▇▇▇ ▇▇▇▇ ▇▇▇▇
▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇▇
Attention: Director;
Referring to: SD96-103
22. ASSIGNABILITY
This Agreement may be assigned by The Regents, but is personal to the
Licensee and assignable by the Licensee only to its United States Affiliates, or
with the written consent of The Regents, which consent will not be unreasonably
withheld.
23. NO WAIVER
No waiver by either party of any default of this Agreement may be deemed
a waiver of any subsequent or similar default.
24. FAILURE TO PERFORM
In either party finds it necessary to undertake legal action against the
other on account of failure of performance due under this Agreement, then the
prevailing party is entitled to reasonable attorney's fees in addition to costs
and necessary disbursements.
25. GOVERNING LAWS
THIS AGREEMENT WILL BE INTERPRETED AND CONSTRUED IN ACCORDANCE WITH THE
LAWS OF THE STATE OF CALIFORNIA, but the scope and validity of any patent or
patent application will be governed by the applicable laws of the country of the
patent or patent application.
26. PREFERENCE FOR UNITED STATES INDUSTRY
Because this Agreement grants the exclusive right to use or sell the
Invention in the United States, the Licensee agrees that any products sold in
the U.S. embodying this Invention or produced through the use thereof will be
manufactured substantially in the United States.
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27. GOVERNMENT APPROVAL OR REGISTRATION
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,
the Licensee shall assume all legal obligations and bear all expenses, fees, and
penalties to do so.
28. EXPORT CONTROL LAWS
The 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.
29. SECRECY
29.1 With regard to confidential information ("Data" which is marked
'Confidential'), which can be oral or written or both (if oral, a written
version shall be transmitted to The Licensee within thirty (30) days), received
from The Regents regarding this Invention, the Licensee agrees:
29.1.1 not to use the Data except for the sole purpose of
performing under the terms of this Agreement;
29.1.2 to safeguard Data against disclosure to others with the
same degree of care as it exercises with its own data of a
similar nature;
29.1.3 not to disclose Data to others (except to its employees,
agents or consultants who are bound to the Licensee by a like
obligation of confidentiality) without the express written
permission of The Regents, except that the Licensee is not
prevented from using or disclosing any of the Data that:
29.1.3.1 the Licensee can demonstrate by written records
was previously known to it;
29.1.3.2 is now, or becomes in the future, public
knowledge other than through acts or omissions of the
Licensee; or
29.1.3.3 is lawfully obtained by the Licensee from
sources independent of The Regents; and
29.1.4 that the secrecy obligations of the Licensee with respect
to Data will continue for a period ending five (5) years from
the termination date of this Agreement.
30. MISCELLANEOUS
30.1 The headings of the several sections 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.
30.2 This Agreement is not binding on the parties until it has been
signed below on behalf of each party. It is then effective as of the Effective
Date.
30.3 No amendment or modification of this Agreement is valid or binding
on the parties unless made in writing and signed on behalf of each party.
30.4 This Agreement embodies the entire understanding of the parties and
supersedes all previous communications, representations or understandings,
either oral or written, between the
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parties relating to the subject matter hereof. The Secrecy Agreement dated June
11, 1996 is hereby terminated.
30.5 In case any of the provisions contained in this Agreement is held
to be invalid, illegal, or unenforceable in any respect, that invalidity,
illegality or unenforceability will not affect any other provisions of this
Agreement, and this Agreement will be construed as if the invalid, illegal, or
unenforceable provisions had never been contained in it.
30.6 This Agreement includes the attached Exhibits A - Patent
Application.
IN WITNESS WHEREOF, both The Regents and the Licensee have executed this
Agreement, in duplicate originals, by their respective and duly authorized
officers on the day and year written.
XXSYS TECHNOLOGY INC.: THE REGENTS OF THE UNIVERSITY OF
CALIFORNIA:
By: /s/▇▇▇▇▇▇ MA By: /s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
------------------------------- -------------------------------
Name: ▇▇▇▇▇▇ Ma Name: ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
Title: Chairman and CEO Title: Director, Technology
Transfer Office
Date: 27th June, 1997 Date: 6/27/97
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