UNIVERSITY OF MINNESOTA EXCLUSIVE PATENT LICENSE AGREEMENT
|
Shaded
Area
- Internal
University Use Only
PTM
Agreement No.:
PTM
Docket No.(s):Z05113
|
UNIVERSITY
OF MINNESOTA
THIS
AGREEMENT
is dated
and effective as of the date of last signature (the "Effective Date"), and
is
made by and between Regents
of the University of Minnesota,
a
constitutional corporation under the laws of the state of Minnesota (the
"University"), and
Imagenetix,
a
corporation,
under the laws of the state of Nevada (the "Company").
Purpose
The
University owns the right to license to others certain rights to the Licensed
Patent(s), as that term is defined and used in this Agreement. The Company
desires that the University grant it a license to use, develop, and
commercialize the inventions claimed in the Licensed Patents. The University
is
willing to grant such a license on the terms set forth below.
NOW,
THEREFORE,
the
parties agree that:
1. Definitions.
For
purposes of interpreting this Agreement, the following terms shall have the
meanings ascribed to them below in this article:
1.1. "Event
of
Force Majeure" means an unforeseeable act that wholly prevents a party from
performing one or more of its material duties under this Agreement and that
was
outside of the reasonable control of the party. An Event of Force Majeure
includes acts of war or of God, insurrection and riot, and labor strikes. An
Event of Force Majeure shall not mean a party's inability to obtain a third
party's consent to any act or omission.
1.2. "Field
of
Use" means the field(s) of use described in section 3(a) of attached
Exhibit A.
1.3. "Net
Sales Price" means the gross amount invoiced for sales, leases, and other
dispositions of Licensed Products less (i) all trade, quantity, and cash
discounts actually allowed, (ii) all credits and allowances actually granted
due
to rejections, returns, billing errors, and retroactive price reductions, (iii)
duties, and (iv) excise, sale and use taxes, and equivalent taxes. In the event
the Company or a sublicensee, as the case may be, sells, leases, or disposes
of
a Licensed Product (i) to a third party that owns fifty percent (50%) or more
of
the voting capital stock, or like equity security, of the Company or the
sublicensee, as the case may be, or (ii) to a third party in which the Company
or a sublicensee, as the case may be, owns fifty percent (50%) or more of the
voting capital stock, or like equity security (such third party is hereinafter
referred to as an “Affiliate”), the “Net Sales Price” for that transaction for
purposes of this Agreement shall be equal to the price the Company or the
sublicensee, as the case may be, charges non-Affiliate third parties for the
Licensed Product or if the Company or the sublicensee does not offer to sell
the
Licensed Product to the public, the price charged by the Company or the
sublicensee for a product of similar kind, quality, and quantity.
1
1.4. "Licensed
Patent" means the patent(s) described in section 2(a) of attached Exhibit A
along with any valid and subsisting patent issued during the term of this
Agreement by the United States Patent and Trademark Office or any like foreign
body with respect to a Patent Application. The term "Licensed Patent" also
means
any reissues or reexaminations of a Licensed Patent.
1.5. "Licensed
Product" means any product or good in the Field of Use that is made by, made
for, sold, transferred, or otherwise disposed of by the Company or its
sublicensees during the term of this Agreement and the Post-termination Period
and that, but for the granting of the rights set forth in this Agreement, would
infringe (including under the doctrine of equivalents) one or more claims in
a
Licensed Patent or Patent Application, or any product or good that is made
using
a process or machine that is covered by a claim in a Licensed Patent or Patent
Application. The term "Licensed Product" also means any service provided by
or
for the Company or its sublicensees that incorporates all or any portion of
a
product that would be a Licensed Product. Unless the parties otherwise agree
in
writing, the term Licensed Product refers only to products and goods
manufactured, made, sold, transferred, or otherwise disposed of during the
term
of this Agreement.
1.6. “Licensed
Technology” means collectively the inventions claimed in each Licensed Patent
and each Patent Application.
1.7. "Patent
Application" means the patent application(s) described in section 2(b) of
attached Exhibit A. The term "Patent Application" also means any continuations,
continuations-in-part, and divisions of a Patent Application.
1.8. "Payment"
means a payment to be made by the Company to the University specified in section
6.1 of this Agreement and described in section 6 of attached Exhibit
A.
1.9. "Performance
Milestone" means an act or event specified in section 5.1 of this Agreement
and
described in section 7 of attached Exhibit A.
1.10. "Post-termination
Period" means the one hundred eighty (180)-day period commencing on the date
of
termination or expiration of this Agreement.
1.11. "Territory"
means the geographical area described in section 3(b) of attached Exhibit
A.
2. Term.
The
term
of this Agreement shall commence on the Effective Date and, unless terminated
earlier as provided below in article 8, this Agreement shall expire on the
date
on which both no Licensed Patent is valid and subsisting in any country in
the
Territory and no Patent Application is pending in any such
country.
2
3. Grant
of License.
3.1. The
Company's Rights.
3.1.1. Subject
to the terms and conditions of this Agreement, the University hereby grants
to
the Company, and the Company hereby accepts, an exclusive license to make
(including to have made on its behalf), use, offer to sell or sell, offer to
lease or lease, import, or otherwise offer to dispose or dispose of Licensed
Products in the Territory. The parties acknowledge and agree that the license
granted in this Agreement shall be limited to the inventions in the Field of
Use
that are expressly claimed in each Licensed Patent and expressly claimed and
allowed in each Patent Application. No provision of this Agreement shall be
construed to grant the Company, by implication, estoppel or otherwise, any
rights other than the rights expressly granted it in this Agreement to the
Licensed Technology, a Licensed Patent or Patent Application, or to any other
University-owned technology, patent applications, or patents.
3.1.2. Unless
the parties otherwise agree as set forth in section 4 of attached Exhibit A,
the
Company shall have the right, exercisable from time to time during the term
of
this Agreement, to sublicense its rights under this Agreement. The Company
shall
deliver to the University a true, correct, and complete copy of the sublicense
agreement or such other agreement under which the Company purports or intends
to
grant such sublicense rights at least ten (10) days prior to the execution
of
such agreement. The Company shall not enter into such agreement if the terms
of
the agreement are inconsistent in any respect with the terms of this Agreement,
including without limitation, sections 5.2, 5.4, 6.3, 8.3, 9.5, 10.4, and 11.3
and subsection 6.4.2. The Company shall cause a clause to be included in each
sublicense that unconditionally permits the Company to terminate the sublicense,
without penalty or expense and without cause, upon no more than sixty (60)
days’
notice to the sublicensee. The Company shall cause a clause to be included
in
each sublicense that unconditionally permits the Company, without obtaining
the
sublicensee’s approval and without penalty or expense, to assign all its future
rights and obligations under the sublicense to the University. Any sublicense
attempted to be made or made in violation of this subsection shall be void
and
shall constitute an event of default under subsection 8.1.1 of this
Agreement.
3.1.3. The
Company, without the prior approval of the University, may assign all, but
no
less than all, its rights and delegate all its duties under this Agreement
to
another if (i) the Company delivers to the University written notice of the
proposed assignment (along with pertinent information about the terms of the
assignment and assignee) at least ninety (90) days prior to the effective date
of the event described below in part ii of this paragraph, and (ii) the
assignment is made as a part of and in connection with (A) the sale by the
Company of all or substantially all of its assets to a single purchaser, (B)
the
sale, transfer, or exchange by the shareholders, partners, or equity owners
of
the Company of a majority interest in the Company to a single purchaser, or
(C)
the merger of the Company into another corporation or other business entity.
Any
assignment attempted to be made or made in violation of this subsection shall
be
void and shall, without further act, cause the immediate termination of this
Agreement.
3
3.2. The
United States Government's Rights.
The
University acknowledges in section 1 of attached Exhibit A whether, to its
knowledge, the Licensed Technology was funded, in whole or in part, by the
federal government of the United States of America. The parties acknowledge
and
agree that the federal government of the United States of America has certain
rights in and to any government-funded Licensed Technology as those rights
are
described in Chapter 18, Title 35 of the United States Code and accompanying
regulations, including Part 401, Chapter 37 of the Code of Federal Regulations,
and that the parties’ rights and obligations under this Agreement to any
government-funded Licensed Technology, including the grant of license set forth
above in subsection 3.1.1, are subject to the applicable terms of the
aforementioned United States laws.
3.3. The
University's Rights.
The
University retains an irrevocable, nonexclusive right to use the Licensed
Technology solely for non-commercial educational, research, and medical purposes
and the University shall have the right to sublicense its rights under this
section to one or more non-profit academic or other research
institutions.
4. Applications
and Patents.
4.1. The
Company shall pay, or reimburse the University for paying, all reasonable and
necessary costs (including attorneys’ and application fees) incurred prior to,
on, or after the Effective Date to apply for, prosecute, and maintain each
Licensed Patent and Patent Application unless otherwise provided in attached
Exhibit A. Within thirty (30) days of its receipt of the University's invoice
for reimbursable expenses, the Company shall deliver to the University payment
in the amount of such invoice. Such invoice shall specify the date on which
the
expense was incurred and the purpose of the expense (including, as applicable,
a
summary of patent attorney services giving rise to the expense); provided,
however, the University shall have no obligation to disclose to the Company
any
information that is protected by the University's attorney-client privilege.
4.2. Pre-Agreement
Patent Filings and Future Cost Reimbursement.
The
Company acknowledges that it has reviewed each Licensed Patent and each Patent
Application and that it has no basis to challenge or dispute the inventorship,
validity, or enforceability of any of the claims made in a Licensed Patent
or a
Patent Application. The Company further represents that, as of the Effective
Date, it has not and does not manufacture, have manufactured, offer to sell,
sell, offer to lease, lease, or import (a) any product or good that infringes
(including under the doctrine of equivalents) a claim in any Licensed Patent
or
Patent Application, or (b) any product or good that is made using a process
or
machine that infringes (including under the doctrine of equivalents) a claim
in
a Licensed Patent or Patent Application.
4
4.3. Patent
Application Filings during the Term of this Agreement.
4.3.1. The
University, in consultation with the Company, shall determine in which countries
the University will file, or cause to be filed, a patent application with
respect to the Licensed Technology.
4.3.2. In
the
event the University and the Company mutually agree that the University should
file a patent application with respect to the Licensed Technology in a
particular country, the University shall retain counsel of its choice to file
and prosecute such patent application; the University shall take all
commercially reasonable steps to cause a patent application to be filed and
a
patent to be issued in that country; the University shall inform the Company
promptly of the status of the prosecution of the patent application, including
delivering to the Company pertinent notices, written and oral communications
with governmental officials, and documents, and shall consult with the Company
on the prosecution of the patent application; and the Company promptly shall
reimburse the University for all the University's out-of-pocket costs, including
application and attorneys' fees, to file and prosecute such patent application
and, if a patent is issued during the term of this Agreement, to maintain
it.
4.3.3. In
the
event the University and the Company do not reach an agreement as to whether
a
patent application with respect to the Licensed Technology should be filed
in a
particular country, the University may, but shall have no duty or obligation
hereunder to, file and prosecute such patent application.
4.3.4. No
provision of this Agreement limits, conditions, or otherwise affects the
University's right to prosecute a patent application with respect to the
Licensed Technology in any country. The University retains the sole and
exclusive right to file or otherwise prosecute a patent application with respect
to the Licensed Technology. In no event shall the Company file a patent
application with respect to the Licensed Technology. The Company shall cooperate
with the University in the filing and prosecution of all patent applications
with respect to the Licensed Technology.
4.4. Maintenance
of Licensed Patents.
The
University shall take all commercially reasonable steps to cause each Licensed
Patent to remain or be valid and subsisting.
4.5. Ownership
of the Licensed Patents and Patent Applications.
No
provision of this Agreement grants the Company any rights, titles, or interests
(except for the grant of license in subsection 3.1.1 of this Agreement) in
the
Licensed Patents or Patent Applications, notwithstanding the Company's payment
of all or any portion of the patent prosecution, maintenance, and related
costs.
5
5. Commercialization.
5.1. Commercialization
and Performance Milestones.
The
Company shall use its commercially reasonable efforts, consistent with sound
and
reasonable business practices and judgment, to commercialize the Licensed
Technology and to manufacture and offer to sell and sell Licensed Products
as
soon as practicable and to maximize sales thereof. Unless excused by the
occurrence of an Event of Force Majeure during the term of this Agreement,
the
Company shall perform, or shall cause to happen or be performed, as the case
may
be, all the performance milestones described in section 7 of attached Exhibit
A.
Upon the attainment of all such milestones, the University and the Company
shall
enter into good faith negotiations with a view towards agreeing upon a new
set
of performance milestones.
5.2. Covenants
Regarding the Manufacture of Licensed Products.
The
Company hereby covenants and agrees that (i) the manufacture, use, sale, or
transfer of Licensed Products shall comply with all applicable federal and
state
laws, including all federal export laws and regulations; and (ii) no Licensed
Product shall be defective in design or manufacture. The Company hereby further
covenants and agrees that, pursuant to ▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇ Code Section 205, it
shall, and it shall cause each sublicensee, to substantially manufacture in
the
United States of America all products embodying or produced through the use
of
an invention that is subject to the rights of the federal government of the
United States of America.
5.3. Commercialization
Reports.
Throughout the term of this Agreement and during the Post-termination Period,
and within thirty (30) days of the date specified in the schedule set forth
in
section 5 of attached Exhibit A, the Company shall deliver to the University
written reports of the Company's and the sublicensees’ efforts and plans to
commercialize the Licensed Technology and to manufacture, offer to sell, or
sell
Licensed Products.
5.4. Use
of
the University's Name and Trademarks or the Names of University Faculty, Staff,
or Students.
No
provision of this Agreement grants the Company or sublicensee any right or
license to use the name or trademarks of the University or the names, or
identities of any member of the faculty, staff, or student body of the
University. The Company shall not use and shall not permit a sublicensee to
use
any such trademarks, names, or identities without the University's and, as
the
case may be, such member’s prior written approval.
6. Payments,
Reimbursements, Reports, and Records.
6.1. Payments.
The
Company shall deliver to the University the payment or payments specified in
section 6 of attached Schedule A. The Company shall make such payments by check,
wire transfer, or any other mutually agreed-upon and generally accepted method
of payment. All checks to the University shall be made payable to "Regents
of
the University of Minnesota" and shall be mailed to the address specified in
article 21 of this Agreement. Upon request, the University shall deliver to
the
Company written wire transfer instructions.
6.2. Reimbursement
of Patent Prosecution Expenses.
Within
thirty (30) days of its receipt of the University's invoice for reimbursable
expenses as specified in section 4.1 of this Agreement, the Company shall
deliver to the University payment in the amount of such invoice. Such invoice
shall specify the date on which the expense was incurred and the purpose of
the
expense (including, as applicable, a summary of patent attorney services giving
rise to the expense); provided, however, the University shall have no obligation
to disclose to the Company any information that is protected by the University's
attorney-client privilege.
6
6.3. Sales
Reports.
Within
sixty (60) days after the last day of a calendar quarter during the term of
this
Agreement and the Post-termination Period, the Company shall deliver to the
University a written sales report (a copy of the form of which is attached
as
Exhibit B) recounting the number and Net Sales Price amount (expressed in U.
S.
dollars) of all sales, leases, or other dispositions of Licensed Products,
whether made by the Company or a sublicensee, during such calendar quarter.
The
Company shall deliver such written report to the University even if the Company
is not required hereunder to pay to the University a payment for sales, leases,
or other dispositions of Licensed Products during the calendar
quarter.
6.4. Records
Retention and Audit Rights.
6.4.1. Throughout
the term of this Agreement and the Post-termination Period and for five (5)
years thereafter, the Company, at its expense, shall
keep and maintain and shall cause each sublicensee and each non-affiliated
third
party that manufactures, sells, leases, or otherwise disposes of Licensed
Products on behalf of the Company to keep and maintain complete and accurate
records of all sales, leases, and other dispositions of Licensed Products during
the term of this Agreement and the Post-termination Period and all other records
related to this Agreement.
6.4.2. The
University, at its expense except as set forth below in this subsection, shall
have the right to inspect and audit the Company's records referred to in
subsection 6.4.1 hereof at the Company's address as set forth in article 21
of
this Agreement or such other locations as the parties shall mutually agree
during the Company's normal business hours. The University shall have the right
to determine the Company’s compliance with the terms of this Agreement. The
Company shall reimburse the University for all its out-of-pocket expenses to
inspect and audit such records if the University, in accordance with the results
of such inspection and audit, determines that the Company has underpaid amounts
owed to the University by at least three percent (3%) or twenty-five thousand
and no/100 dollars ($25,000.00), whichever is smaller, in a reporting period.
The Company shall cause each sublicensee and each non-affiliated third party
that manufactures, sells, leases, or otherwise disposes of Licensed Products
on
behalf of the Company to grant the University a right to inspect and audit
the
sublicensee’s or third party’s records substantially similar to the rights
granted the University in this subsection. In connection with, and prior to
the
commencement of, an audit, if the Company so requests in writing to the
University, the Company, the University and the auditor shall enter into an
agreement prohibiting the auditor and the University from disclosing the
Company’s nonpublic, proprietary information to any third party without the
Company’s prior written consent; provided, however, that consistent with
generally accepted auditing standards and the auditor’s professional judgment,
the auditor may disclose such information to the University and its agents,
counsel, or consultants. The Company acknowledges that such an agreement is
adequate to protect its legitimate interests, and the parties agree that there
shall be no additional nondisclosure agreement demanded as a condition to the
commencement of an audit and the University’s exercising its rights under this
subsection.
7
6.5. Currency
and Checks.
All
computations and payments made under this Agreement shall be in United States
dollars. The exchange rate for the currency into dollars as reported in the
Wall
Street Journal
as the
New York foreign exchange mid-range rate on the last business day of the month
in which the transaction was entered into shall be used for determining the
dollar value of transactions conducted in non-United States dollar
currencies.
7. Infringement.
7.1. Third-Party
Infringement of a Licensed Patent.
7.1.1. Notice
of Third Party's Infringement.
In the
event a party learns of substantial, credible evidence that a third party is
making, using, or selling a product in a Field of Use in the Territory that
infringes a Licensed Patent, such party promptly thereafter shall deliver
written notice of the possible infringement to the other party, describing
in
detail the information suggesting infringement of the Licensed
Patent.
7.1.2. Legal
Action to Enforce a Licensed Patent.
Upon
the delivery of the notice described in subsection 7.1.1 of this Agreement,
the
Company and the University shall mutually agree upon the steps and acts they
shall take to investigate the matter, to cause the third party to cease
infringing a Licensed Patent, and to seek compensation for the acts of
infringement and reimbursement for related costs and expenses. Either party
shall have the right to commence an action to enforce a Licensed Patent. The
University shall not have an obligation under this Agreement to commence or
maintain such an action. Prior to commencing such an action, the parties shall
enter into good faith negotiations on the desirability of bringing suit, the
parties to the action, the selection of counsel, and such other matters as
the
parties shall agree to discuss. No provision of this Agreement shall limit,
condition, or otherwise affect a party’s statutory and common-law rights to
commence an action to enforce a Licensed Patent.
7.2. The
Company's Alleged Infringement of a Third Party's Rights.
7.2.1. Notice
and Investigation of Alleged Infringement.
In the
event the Company learns of substantial, credible evidence that its or a
sublicensee’s manufacture, sale, lease, or other disposition of a Licensed
Product potentially or likely infringes the patent rights of a third party,
the
Company promptly thereafter shall deliver written notice of the possible
infringement to the University, describing in detail the information suggesting
such infringement. The Company, in consultation with the University, shall
engage counsel to investigate the matter and to defend any action commenced
by
the third party. The Company shall pay the costs of such engagement.
7.2.2. Settlement
and Defense.
Regardless whether the University or the Company or both are named as parties
in
an action alleging the Company's infringement of a valid and subsisting patent
or other intellectual property right, the University and the Company shall
cooperate in the defense of the action. The University and the Company shall
mutually agree upon the terms of any settlement of the third party's claims
arising out of the manufacture, sale, lease, or other disposition of Licensed
Products. In no event shall the Company admit, allege or otherwise state in
connection with the defense of a suit described in this subsection orally or
in
any answer, request for admissions, interrogatories, deposition, affidavit,
court testimony, court document (including motion papers and briefs), or any
other document of whatever type that a Licensed Patent is invalid or that a
claim in a Licensed Patent is invalid, unless the University has given its
prior
written consent.
8
7.2.3. Modification
of the Terms of this Agreement.
In the
event the Company's manufacture, sale, lease, or other disposition of Licensed
Products is proven by substantial credible evidence to infringe the patent
rights of a third party, the University and the Company shall enter into good
faith negotiations to modify the payment terms set forth in section 6.1 of
this
Agreement. As part of such negotiations, the parties may agree to reduce by
up
to one-half the amount of any running royalty by the amount of any fee or
royalty the Company shall be required to pay to license from a third party
patent rights necessary and desirable to permit the Company or a sublicensee
to
manufacture, sell, lease, or otherwise dispose of Licensed
Products.
8. Termination.
8.1. By
the
University.
8.1.1. If
the
Company breaches or fails to perform one or more of its duties under this
Agreement, the University may deliver to the Company a written notice of
default. The University may terminate this Agreement by delivering to the
Company a written notice of termination if the default has not cured in full
within sixty (60) days of the delivery to the Company of the notice of default.
8.1.2. The
University may terminate this Agreement by delivering to the Company a written
notice of termination at least ten (10) days prior to the date of termination
if
the Company (i) becomes insolvent; (ii) voluntarily files or has filed against
it a petition under applicable bankruptcy or insolvency laws that the Company
fails to have released within thirty (30) days after filing; (iii) proposes
any
dissolution, composition, or financial reorganization with creditors or if
a
receiver, trustee, custodian, or similar agent is appointed; or (iv) makes
a
general assignment for the benefit of creditors.
8.2. By
the
Company.
The
Company may terminate this Agreement at any time by delivering to the University
a written notice of termination at least sixty (60) days prior to the effective
date of termination.
8.3. Post-termination
Period.
8.3.1. The
Company shall not use, or permit others to use, the Licensed Technology or
manufacture or have manufactured Licensed Products after the termination or
expiration of this Agreement. After the termination of this Agreement under
section 8.2 or the expiration of this Agreement, the Company may offer to sell
and sell, offer to lease and lease, and otherwise offer to dispose of or dispose
of Licensed Products in the Territory that were manufactured prior to the
termination or the expiration of this Agreement. After termination of this
Agreement under section 8.1, the Company shall not offer to sell or sell, offer
to lease or lease, or otherwise offer to dispose of or dispose of a Licensed
Product in the Territory.
9
8.3.2. Upon
termination of this Agreement, for whatever reason, the Company shall grant
the
University an option to assume, under an assignment, all the Company’s future
titles, rights, and obligations under the sublicenses granted under this
Agreement. The option shall expire sixty (60) days after the date of grant.
The
University may exercise the option by delivering written notice of exercise
to
the Company during the exercise period. The University shall have no obligation
to pay the Company any amount in consideration for granting or exercising of
the
option.
Upon
termination of this Agreement, for whatever reason, the Company, if requested
by
the University in a written notice, shall terminate each sublicense granted
under this Agreement; shall deliver to the University a true, correct, and
complete list identifying each sublicensee and describing the terms of each
sublicense, including the royalty rates and other financial terms, milestones,
and other material terms; and shall cooperate in the University’s efforts to
enter into licenses or other forms of agreement with the sublicensees. The
Company shall be liable for any costs, expenses, or damages payable to the
sublicensee arising out of the termination of a sublicense.
9. Release,
Indemnification, and Insurance.
9.1. The
Company's Release.
For
itself and its employees, the Company hereby releases the University and its
regents, employees, and agents forever from any and all suits, actions, claims,
liabilities, demands, damages, losses, or expenses (including reasonable
attorneys' and investigative expenses) relating to or arising out of (i) the
manufacture, use, lease, sale, or other disposition of a Licensed Product;
(ii)
the assigning or sublicensing of the Company’s rights under this Agreement; or
(iii) with the exception of the warranties set forth in sections 10.1 and 10.2
of this Agreement, the University's performance of its obligations
hereunder.
9.2. The
Company's Indemnification.
Throughout the term of this Agreement and thereafter, the Company shall
indemnify, defend, and hold the University and its regents, employees, and
agents harmless from all suits, actions, claims, liabilities, demands, damages,
losses, or expenses (including reasonable attorneys' and investigative
expenses), relating to or arising out of the manufacture, use, lease, sale,
or
other disposition of a Licensed Product, including, without limitation, breach
of contract and warranty and products-liability claims relating to a Licensed
Product and claims brought by a sublicensee.
9.3. The
University's Indemnification.
Subject
to the limitations on liability set forth in article 11 of this Agreement,
throughout the term of this Agreement and thereafter, the University shall
indemnify, defend, and hold the Company and its directors, employees, and agents
harmless from all suits, actions, claims, liabilities, demands, damages, losses,
or expenses (including reasonable attorneys' and investigative expenses)
relating to or arising out of the University's breach of the express warranties
set forth in sections 10.1 and 10.2 of this Agreement.
10
9.4. The
Company's Insurance.
9.4.1. Throughout
the term of this Agreement, or during such period as the parties shall agree
in
writing, the Company shall maintain, and shall cause each sublicensee to
maintain, in full force and effect comprehensive general liability (CGL)
insurance, with single claim limits acceptable to the University. Such insurance
policy shall include coverage for claims that may be asserted by the University
against the Company under section 9.2 of this Agreement and for claims by a
third party against the Company or the University arising out of the purchase
or
use of a Licensed Product. Such insurance policy shall name the University
as an
additional insured if the University so requests in writing. Such insurance
policy shall require the insurer to deliver written notice to the University
at
the address set forth in article 21 of this Agreement, at least thirty (30)
days
prior to the termination of the policy. Upon receipt of the University's written
request, the Company shall deliver to the University a copy of the certificate
of insurance for such policy.
9.4.2. The
provisions of subsection 9.4.1 of this Agreement shall not apply if the
University agrees in writing to accept the Company's or a sublicensee’s, as the
case may be, self-insurance plan as adequate insurance.
9.5. Sublicensees
- Release.
The
Company shall cause each sublicensee to grant the University a release from
liabilities substantially similar to the release granted in favor of the
University in section 9.1 of this Agreement.
10. Warranties.
10.1. Authority.
Each
party represents and warrants to the other party that it has full corporate
power and authority to execute, deliver, and perform this Agreement, and that
no
other corporate proceedings by such party are necessary to authorize the party's
execution or delivery of this Agreement.
10.2. Exclusive
Rights.
The
University warrants that except for the rights of the federal government as
described in section 3.2 of this Agreement, to the best of its knowledge, the
University owns or has acquired the exclusive rights (including all patent
and
other intellectual property rights) in the Licensed Technology, Licensed Patent,
and Patent Application.
11
10.3. Disclaimers.
10.3.1. EXCEPT
FOR THE EXPRESS WARRANTIES SET FORTH IN SECTIONS 10.1 AND 10.2 OF THIS
AGREEMENT, THE
UNIVERSITY DISCLAIMS AND EXCLUDES ALL WARRANTIES, EXPRESS AND IMPLIED,
CONCERNING THE LICENSED TECHNOLOGY, EACH LICENSED PATENT, EACH PATENT
APPLICATION, AND EACH LICENSED PRODUCT, INCLUDING, WITHOUT LIMITATION,
WARRANTIES OF NON-INFRINGEMENT AND THE IMPLIED WARRANTIES OF MERCHANTABILITY
AND
FITNESS FOR A PARTICULAR PURPOSE.
10.3.2. The
University expressly disclaims any warranties concerning and makes no
representations:
|
(i)
|
that
the Patent Applications will be approved or that a patent will
issue;
|
| (ii) |
concerning
the validity or scope of any Licensed Patent;
or
|
|
(iii)
|
that
the manufacture, use, sale, lease or other disposition of a Licensed
Product will not infringe a third party's patent or violate its
intellectual property rights.
|
10.4. Sublicensees
- Warranties.
The
Company shall cause each sublicensee to give the University warranties and
disclaimers and exclusions of warranties substantially similar to the warranty
and disclaimers and exclusions of warranties in favor of the University in
section 10.1 and subsections 10.3.1 and 10.3.2 of this Agreement.
11. Damages.
11.1. Remedy
Limitation.
EVEN
IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES, IN NO EVENT SHALL THE UNIVERSITY
BE LIABLE FOR (A) PERSONAL INJURY OR PROPERTY DAMAGES OR (B) LOST PROFITS,
LOST BUSINESS OPPORTUNITY, INVENTORY LOSS, WORK STOPPAGE, LOST DATA OR ANY
OTHER
RELIANCE OR EXPECTANCY, DIRECT OR INDIRECT, SPECIAL, INCIDENTAL OR CONSEQUENTIAL
DAMAGES, OF ANY KIND.
11.2. Damage
Cap.
IN
NO EVENT SHALL THE UNIVERSITY'S TOTAL LIABILITY FOR THE BREACH OR NONPERFORMANCE
OF THIS AGREEMENT EXCEED THE AMOUNT OF PAYMENTS PAID TO THE UNIVERSITY UNDER
SECTION 6.1 OF THIS AGREEMENT. THIS LIMITATION SHALL APPLY TO CONTRACT, TORT,
AND ANY OTHER CLAIM OF WHATEVER NATURE.
11.3. Sublicensees
- Damages.
The
Company shall cause each sublicensee to agree to limitations of remedies and
damages substantially similar to the limitations of remedies and damages set
forth in sections 11.1 and 11.2 of this Agreement.
12. Amendment
and Waiver. This
Agreement may be amended from time to time only by a written instrument signed
by the parties. No term or provision of this Agreement shall be waived and
no
breach excused unless such waiver or consent shall be in writing and signed
by
the party claimed to have waived or consented. No waiver of a breach shall
be
deemed to be a waiver of a different or subsequent breach.
12
13. Assignment.
Except
as provided in subsections 3.1.2 and 3.1.3 of this Agreement, the Company shall
not assign or sublicense its interest or delegate its duties under this
Agreement, unless the University consents to the assignment, sublicense, or
delegation. Any assignment, sublicense, or delegation attempted to be made
in
violation of this article shall be void. Absent the consent of all the parties
to this Agreement, an assignment or delegation shall not release the assigning
or delegating party from its obligations under this Agreement.
This
Agreement shall inure to the benefit of the Company and the University and
their
respective permitted sublicensees and trustees.
14. Applicable
Law.
The
internal laws of the state of Minnesota shall govern the validity, construction,
and enforceability of this Agreement, without giving effect to the conflict
of
laws principles thereof.
15. Access
to University Information. The
parties acknowledge that the University is subject to the terms and provisions
of the Minnesota Government Data Practices Act, Minnesota Statutes §13.01
et
seq.
(the
“Act”), and that the Act requires, with certain exceptions, the University to
permit the public to inspect and copy any information that the University shall
have collected, created, received, maintained, or disseminated.
To
the
extent permitted by law, the University shall hold in confidence and disclose
only to University employees who need to know the reports described in section
6.3 of this Agreement and the records inspected pursuant to section 6.4 of
this
Agreement. No provision of this Agreement shall further prohibit, limit, or
condition the University's right to use and disclose any information in
connection with enforcing this Agreement, in court or elsewhere.
16. Consent
and Approvals.
Except
as otherwise expressly provided, all consents or approvals required under the
terms of this Agreement shall be in writing and shall not be unreasonably
withheld or delayed.
17. Construction.
The
headings preceding and labeling the sections of this Agreement are for the
purpose of identification only and shall not in any event be employed or used
for the purpose of construction or interpretation of any portion of this
Agreement. As used herein and where necessary, the singular shall include the
plural and vice versa, and masculine, feminine, and neuter expressions shall
be
interchangeable.
18. Enforceability.
If a
court of competent jurisdiction adjudges a provision of this Agreement
unenforceable, invalid, or void, such determination shall not impair the
enforceability of any of the remaining provisions hereof and such provisions
shall remain in full force and effect.
19. Entire
Agreement; No Third-Party Beneficiaries.
This
Agreement (including all attachments, exhibits, and amendments hereto) is
intended by the parties as the final and binding expression of their contract
and agreement and as the complete and exclusive statement of the terms thereof.
This Agreement cancels, supersedes, and revokes all prior negotiations,
representations and agreements among the parties, whether oral or written,
relating to the subject matter of this Agreement.
13
No
provision of this Agreement, express or implied, is intended to confer upon
any
person other than the parties to this Agreement any rights, remedies,
obligations, or liabilities hereunder. No sublicensee shall have a right to
enforce or seek damages under this Agreement.
20. Language
and Currency.
Unless
otherwise expressly provided in this Agreement, all notices, reports, and other
documents and instruments that a party hereto elects or is required by the
terms
of this Agreement to deliver to the other party hereto shall be in English,
and
all notices, reports, and other documents and instruments detailing revenues
and
earned under this Agreement or expenses chargeable to a party hereto shall
be
United States dollar denominated.
21. Notices.
All
notices, requests, and other communications that a party is required or elects
to deliver shall be in writing and shall be delivered personally, or by
facsimile or electronic mail (provided such delivery is confirmed), or by a
recognized overnight courier service or by United States mail, first-class,
certified or registered, postage prepaid, return receipt requested, to the
other
party at its address set forth below or to such other address as such party
may
designate by notice given pursuant to this article:
|
If
to the University:
|
Patents
and Technology Marketing
University
of Minnesota
Attn:
Assistant Vice President
450
▇▇▇▇▇▇▇▇ Alumni Center
▇▇▇
▇▇▇ ▇▇▇▇▇▇ ▇.▇.
▇▇▇▇▇▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇-▇▇▇▇
Facsimile
No.: (▇▇▇) ▇▇▇-▇▇▇▇
E-mail:
▇▇▇@▇▇▇.▇▇▇
|
|
For
notices sent pursuant to article 8, with a copy to:
|
University
of Minnesota
Office
of the General Counsel
Attn:
Transactional Law Services Group
360
▇▇▇▇▇▇▇▇ Alumni Center
▇▇▇
▇▇▇ ▇▇▇▇▇▇ ▇.▇.
▇▇▇▇▇▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇-▇▇▇▇
Facsimile
No.: (▇▇▇) ▇▇▇-▇▇▇▇
E-mail:
▇▇▇▇▇▇▇▇▇@▇▇▇▇.▇▇▇.▇▇▇.▇▇▇
|
|
If
to the Company:
|
Imagenetix,
Inc.
Attn:
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
▇▇▇▇▇
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇
▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Facsimile
No.: 858-674-8455
E-mail:
▇▇▇▇@▇▇▇▇▇▇▇▇▇▇.▇▇▇
|
14
22. Publicity.
The
University reserves the right to disclose to the public the execution and
delivery of this Agreement along with the Company's name and the name of the
Development.
23. Relationship
of Parties.
In
entering into, and performing their duties under, this Agreement, the parties
are acting as independent contractors and independent employers. No provision
of
this Agreement shall create or be construed as creating a partnership, joint
venture, or agency relationship between the parties. No party shall have the
authority to act for or bind the other party in any respect.
24. Security
Interest.
In no
event shall the Company grant, or permit any person to assert or perfect, a
security interest in the Company's rights under this Agreement.
25. Survival.
Immediately upon the termination or expiration of this Agreement, except for
certain rights granted for the Post-termination Period described above in
section 8.3, all the Company's rights under this Agreement shall terminate;
provided, however, the Company's obligations that have accrued prior to the
effective date of termination or expiration of this Agreement (e.g.,
the
obligation to report and make payments on sales, leases, or dispositions of
Licensed Products and to reimburse the University for costs) and the obligations
specified in sections 6.1 and 6.2 of the Agreement shall survive. The
obligations and rights set forth in sections 6.4 and 8.3 and articles 9, 10,
and
11 of this Agreement shall survive the termination or expiration of this
Agreement.
26. Collection
Costs and Attorneys' Fees.
If a
party shall fail to perform an obligation or otherwise breaches one or more
of
the terms of this Agreement, the other party may recover from the non-performing
breaching party all its costs (including actual attorneys' and investigative
fees) to enforce the terms of this Agreement.
27. Forum
Selection.
A suit,
claim, or other action to enforce the terms of this Agreement shall be brought
exclusively in the state courts of Hennepin County, Minnesota. The Company
hereby submits to the jurisdiction of that court and waives any objections
it
may have to that court asserting jurisdiction over the Company or its assets
and
property.
IN
WITNESS WHEREOF,
the
parties have caused this Agreement to be duly executed by their respective
authorized representatives.
|
Regents
of the University of Minnesota
|
Imagenetix
|
|
By:________________________________
▇▇▇▇▇▇▇
▇. ▇▇▇▇▇▇▇
Acting
Assistant Vice President
Patents
and Technology Marketing
Date:______________________________
|
By:_____________________________
Name:
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Title:
President
Date:____________________________
|
15
|
Shaded
Area - Internal University Use Only
PTM
Agreement No.:
PTM
Docket No.(s):Z01153
|
Exhibit
A
Exclusive
Patent License Schedule
1. Federal
Government Rights (section 3.2):
The
University acknowledges that, to the best of its knowledge, the federal
government of the United States of America has no rights in or to the Licensed
Technology.
2. Patents
and Patent Applications (sections 1.4 and 1.7):
| (a) |
Patents
issued prior to the date of this Agreement:
U.S. Patent 6,899,892, “Methods to Reduce
Body Fat”, issued on May 31, 2005.
|
| (b) |
Patent
Applications submitted prior to and pending as of the date of this
Agreement:
None.
|
3. Fields
of Use and Territory (subsection 3.1.1):
| (a) |
Fields
of Use: All Human Uses
|
| (b) |
Territory:
US
|
4. Sublicense
Rights (subsection 3.1.2):
The
Company may sublicense its rights under this Agreement subject to sublicense
payments described in provision 6 of this Amendment.
|
5.
|
Commercialization
Reports (section 5.3):
|
Quarterly:
Within thirty (30) days after each calendar quarter after the Effective Date
of
this Agreement, the Company shall deliver to the University the report described
in section 5.3 of the Agreement. Such report shall include, when applicable,
the
protocol and results of pre-clinical and clinical studies.
A-1
6. Payments
(section 6.1):
a. Up-front
Payment.
The
Company shall pay to the University within fourteen (14) days of the Effective
Date ten thousand and 00/100 dollars ($10,000) as an up-front payment. This
up-front payment shall be non-refundable and not creditable against future
royalty obligations.
b. Simple
Running Royalty Payments.
The
Company shall pay to the University within sixty (60) calendar days after the
last day of each calendar quarter during the term of this Agreement and the
Post-termination Period an amount equal to seven and a half percent (7.5%)
of
the Net Sales Price of all sales, leases, or dispositions of Licensed Products
made by the Company and its sublicensees during such quarter as a running
royalty payment.
c. Minimum
Annual Royalties:
In the
event the Simple Running Royalty Payments paid to the University under section
6.1 of the Agreement and section 6(a) of Exhibit A do not aggregate a minimum
of
twenty five thousand US dollars ($25,000) for each calendar year starting with
calendar year 2006 and continuing throughout the term of this Agreement,
Company, in order to retain the license granted herein, shall pay to the
University, within 60 (sixty) calendar days of the end of each calendar year,
the difference between the actual Simple Running Royalty Payment for such year
and such minimum sum. The amount payable under section 6(d), sublicense
payments, shall not count towards meeting the Minimum Annual Royalty payable
under this section 6(c).
d. Sublicense
Payments:
In
addition to payments called for under section 6 of this Exhibit A, the Company
shall pay the University twenty-five percent (25%) of all forms of compensation
received in connection with granting a third party sublicense rights under
this
Agreement, including upfront, periodic and milestone payments but excluding
running royalty payments as provided in section 6(b) and stock and other forms
of equity. The Company shall cause twenty-five percent (25%) of the total number
of shares of stock or other forms of equity issued in connection with, and
as
compensation for, granting a third party sublicense rights under this Agreement
to be issued to the University. This payment will be paid to the University
within thirty (30) calendar days from the receipt of any such revenue from
a
Sublicensee. The payments made under this section 6(d) shall not be creditable
against the Company’s other royalty obligations.
7. Performance
Milestones (section 4.1):
By
January 30, 2006, First Commercial Sale of a Product.
8. Other
Terms:
Patent
Cost Reimbursement.
A-2
Notwithstanding
any term of this Agreement to the contrary, the Company shall have no obligation
under this Agreement to pay, or reimburse the University for paying, any cost
or
expense incurred prior to the Effective Date to apply for, prosecute, or
maintain each Licensed Patent or Patent Application.
A-3
|
Shaded
Area - Internal University Use Only
PTM
Agreement No.:__________________
PTM
Docket No.(s):___________________
___________________________________
|
Exhibit
B
Royalty
Report Form
Date
|
**
EXAMPLE ONLY **
FORM
WILL BE SENT
TO
COMPANY EACH PERIOD
FOR
COMPLETION
|
Company
Name & Address
License
Number_______________
Reporting
Period: __________________ Report
Due Date: __________________
This
report must be submitted regardless of whether royalties are
owed.
Please
do not leave any column blank. State all information requested
below.
|
U
of M
Docket
#
|
Product
Description
|
Royalty
Rate
|
Quantity/
Net
Sales
|
Royalty
Due
|
|
Report
Completed by: ___________________________________________
|
|
Total
Royalties Due:______________________________
|
|
Telephone
Number:____________________________________
|
||
|
If
you have questions please contact:
|
▇▇▇▇▇▇
▇▇▇▇▇▇
|
|
|
▇▇▇-▇▇▇-▇▇▇▇
|
||
|
▇▇▇▇▇▇▇▇@▇▇▇.▇▇▇
|
Please
make check payable to: Regents of the University of
Minnesota
B-1