EXHIBIT 10.1
LICENSE AGREEMENT
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This Agreement, effective this 28th day of June, 1995, ("Effective Date"),
by and between ▇▇▇▇▇ UNIVERSITY RESEARCH FOUNDATION ("BURF" or "LICENSOR"), a
corporation duly organized and existing under the laws of the State of Rhode
Island and having a principal office at ▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇ and ▇▇▇▇▇▇▇ RESEARCH CORPORATION ("▇▇▇▇▇▇▇ Research" or
"LICENSEE"), a New Jersey corporation having its principal office at One ▇▇▇▇▇▇▇
Road, Flanders, New Jersey.
WHEREAS, BURF is the owner of U.S. Patent Number 4,710,030 and certain
other inventions and proprietary information related to the measurement of the
properties of thin films and surface characteristics; and
WHEREAS, ▇▇▇▇▇▇▇ Research is the owner of, inter alia, automated
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semiconductor metrology automation platforms (FE-III, FE-IV) including, an
automatic microscope, auto height, tilt optics platform, automated wafer
handling robotics and control system with proprietary software, operation
interface, pattern recognition system SECS-II/GEM system, data mapping system,
data review system and recipe system, with attendant know-how, process
technology and related software; and
WHEREAS, ▇▇▇▇▇▇▇ Research has expertise in the production, sales,
marketing, manufacture and support of technology to industry of instruments for
the measurement of surface characteristics; and
WHEREAS, BURF desires to have its patents, inventions and proprietary
information used in the public interest and desires to grant a license thereto
on the terms set forth below; and
WHEREAS, LICENSEE desires to obtain a license for such patents, inventions
and proprietary information rights upon the terms and conditions set forth
below;
NOW, THEREFORE, in consideration of the premises and the mutual covenants
contained herein, the parties agree as follows:
ARTICLE 1 - DEFINITIONS
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For the purpose of this Agreement, the following words and phrases shall
have the following meanings:
1.1 "AFFILIATE" shall mean a corporation or other business entity
controlled by, controlling or under common control with, a party hereto. For
this purpose, control of a corporation or other business entity shall mean
direct or indirect beneficial ownership of thirty (30%) percent or more of the
voting interest in, or a thirty (30%) percent or greater interest in the equity
of, such corporation or other business entity.
1.2 "CONFIDENTIAL INFORMATION" shall mean all information related to the
subject of this License Agreement or to the Intellectual Property which is
disclosed by one party to the other, to the extent that such information, as of
the date of disclosure, is not: (a) known to the receiving party; (b) disclosed
in published literature; (c) generally available to industry; (d) obtained by
the receiving party from a third party without binder or secrecy, provided,
however, that such third party has no confidentiality obligations to the
disclosing party or to any of its AFFILIATES relating to the disclosed
information; or (e) the information is later made public through sources not
related to BURF or ▇▇▇▇▇▇▇ Research. CONFIDENTIAL INFORMATION shall also
include ▇▇▇▇▇▇▇ Research's technology, know-how, proprietary information,
including lists of customers, trade information, sales and service information.
1.3 "FIRST COMMERCIAL SALE" shall mean the initial transfer by Licensee,
its AFFILIATE or sublicensee, to an unrelated third party of LICENSED PRODUCT
subject to royalties hereunder for commercial use and not for research,
development or testing purposes.
1.4 "LICENSED PRODUCT" shall mean any instrument system, device, software,
protocol, or service which is based on or incorporates any claim of the PATENT
RIGHTS or the claims of inventions listed on Exhibit A or Exhibit B and is part
of the initial instrument system sold to end-users, or provides upgraded
capabilities with respect to the PATENT RIGHTS. "LICENSED PRODUCT" shall not,
however, include: (i) replacement parts provided or sold to end-users after the
initial system is delivered; (ii) all software provided after delivery which
does not provide additional functional capabilities which incorporates the
claims of the PATENT RIGHTS; (iii) software upgrades or revisions which do not
provide additional functional capabilities which incorporates the claims of the
PATENT RIGHTS; (iv) service and maintenance of hardware and/or software and
peripherals to the system. For purposes of this Agreement, a product shall be
deemed a LICENSED PRODUCT if such product is covered, in whole or in part, by at
least one PATENT RIGHT in one country, whether or not that product is made, used
or sold within that country. For example, an instrument system that
incorporates one of the claims of U.S. Patent 4,710,030 would be a LICENSED
PRODUCT and would be subject to a royalty payment if sold in Japan, even though
there is no issued patent in Japan.
1.5 "NET SALES" shall mean the gross sales collected from unrelated third
party customers, anywhere in the world, by LICENSEE, and its AFFILIATES, and
sublicensees for LICENSED PRODUCTS, less the sum of (a) transportation,
insurance, and handling charges; (b) sales, excise turnover and similar taxes
and any duties and other governmental charges imposed upon the production,
importation, use or sale of such LICENSED PRODUCTS and (c) any returns. For
purposes of this definition, LICENSED PRODUCTS shall be considered sold when
paid in full by customer other than LICENSEE'S AFFILIATE. ▇▇▇▇▇▇▇ Research
will, however, pay to LICENSOR a portion of royalties after ▇▇▇▇▇▇▇ Research
receives at least seventy (70%) percent of the total purchase price from its
customer for LICENSED PRODUCT. The portion paid to BURF shall be the same
percentage as the percentage of the purchase price paid to ▇▇▇▇▇▇▇ Research.
1.6 "PATENT RIGHTS" shall mean (a) United States patent number 4,710,030;
(b) all United States and foreign patents based upon United States Patent Number
4,710,030 and inventions which are patented and listed in Exhibit A or Exhibit B
hereto; (c) any additions, continuations, continuations-in-part, divisions,
reissues or renewals and extensions based thereon; and (d) all United States and
foreign patent and other industrial property rights obtained from any of said
United States or foreign patents applications, and reissues and extensions
thereof.
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1.7 "OTHER INTELLECTUAL PROPERTY RIGHTS" shall mean the technology, know-
how, processes or intellectual property not listed on Exhibit A and/or Exhibit B
which results from: (i) work undertaken only by ▇▇▇▇▇▇▇ Research during the
commercialization of the PATENT RIGHTS; (ii) work by BURF/▇▇▇▇▇ personnel during
consulting for ▇▇▇▇▇▇▇ Research; and (iii) work by ▇▇▇▇▇▇▇ Research consultants
or personnel. OTHER INTELLECTUAL PROPERTY RIGHTS shall be the property of
▇▇▇▇▇▇▇ Research. Exhibit B shall contain a list of any "jointly owned
inventions" by BURF and ▇▇▇▇▇▇▇ Research. A "jointly owned invention" shall be
patented technology which has been invented by the joint efforts of BURF and
▇▇▇▇▇▇▇ Research where each party has been materially responsible for an
integral portion of the resulting invention. BURF shall, at its option, bring
inventions to ▇▇▇▇▇▇▇ Research which relate or have reference to the PATENT
RIGHTS. The parties shall then mutually determine whether the invention, when
patented, should be part of Exhibit A or Exhibit B.
1.8 "RESEARCH AGREEMENT" shall mean the Agreement entered into _________,
1995 by and between ▇▇▇▇▇▇▇ Research and ▇▇▇▇▇ University for the support of
research in ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇' laboratory.
ARTICLE 2 - GRANT
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2.1 Grant. BURF hereby grants to LICENSEE, subject to the terms herein
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recited, the exclusive, nontransferable (except as provided in Article 9 herein)
perpetual, royalty bearing, worldwide right and license under the PATENT RIGHTS
with the right to grant sublicenses, to make, have made, use, sell and
distribute (directly or indirectly through third parties) LICENSED PRODUCTS.
2.2 License to U.S. Government. This Agreement is expressly subject to and
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conditional upon the license(s) granted by BURF to the United States Government,
which licenses are nonexclusive, nontransferable, irrevocable and paid-up
license(s) to practice, on behalf of the United States Government, specific
subject inventions. True copies of the license(s) referred to by this paragraph
are annexed as Exhibit C. These licenses shall not diminish the specific
commercial opportunities ▇▇▇▇▇▇▇ Research has advised BURF are critical to
▇▇▇▇▇▇▇ Research's investment in the commercialization of the technology that is
the subject matter of this License Agreement.
2.3 Reservation of Research Rights. Anything to the contrary
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notwithstanding, BURF reserves the right to use the PATENT RIGHTS and
CONFIDENTIAL INFORMATION for its own research and educational purposes. The
"educational purposes" herein referred to shall include BURF working with
commercial entities to analyze samples. BURF shall not, however, make use of
any of the PATENT RIGHTS, in whole or in part, for any commercial purpose,
without the prior written approval of ▇▇▇▇▇▇▇ Research. LICENSEE may refuse to
grant such rights and/or require BURF to pay LICENSEE royalties to obtain such
rights.
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ARTICLE 3 - ROYALTIES
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3.1 License Fee. LICENSEE shall pay BURF a license issue fee of ***
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upon signing this Agreement.
3.2 Royalties. Beginning with the First Commercial Sale and subject to
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the terms hereof, LICENSEE agrees to pay to BURF, as partial consideration for
the rights granted under this Agreement, a royalty of *** of NET SALES.
Royalties due on NET SALES from Exhibit B only shall be *** . In no event
shall ▇▇▇▇▇▇▇ Research ever be required to pay to BURF a royalty on any goods
or services, or combination thereof, which royalty exceeds a total of *** of
NET SALES. Royalties shall only be paid on inventions which are then subject
to a valid and existing U.S. patent and which are listed on Exhibits A or ▇.
▇▇▇▇▇▇▇ Research shall not, under any circumstances, including but not limited
to: (i) combinations of royalty entitlements from Exhibits A and B; (ii)
overlapping royalties from different inventions listed on the exhibits; (iii)
or otherwise be required to pay more than a total of *** of the NET SALES on
any transaction which triggers a royalty payment to BURF.
3.3 Royalty Period and Territory. The obligation to pay royalties under
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Section 3.2 shall continue, as to each U.S. patent, throughout the world, until
the date of expiration of that U.S. patent as incorporated in the PATENT RIGHTS
or on Exhibit A or Exhibit B.
3.4 Payment. Royalties will be due and payable within forty-five (45)
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days of the end of each calendar quarter. Royalty and fee payments shall be made
in United States dollars in Providence, Rhode Island. Exchange rates applied
will be the closing buying rates quoted by the Wall Street Journal on the last
business day of the applicable calendar quarter. In the event any royalty
payment due is not made when due, and is still not paid after written notice by
BURF to ▇▇▇▇▇▇▇ Research that the payment is due, then the amount due shall
accrue interest from the due date at an annual rate equal to the prime rate
charged by Chase Bank compounded annually.
3.5 Maintenance Fee. In order to keep this Agreement in force, LICENSEE
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shall pay BURF a license maintenance fee of *** . The maintenance fee shall be
credited against any royalties due BURF. The obligation to pay the maintenance
fees shall forever cease after BURF has received payment of *** in royalties
and/or maintenance fees.
ARTICLE 4 - REPORTS AND RECORDS
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4.1 Reports. LICENSEE shall, upon the written request of BURF, report to
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BURF on its efforts to bring the PATENT RIGHTS into broad commercial use and
shall provide copies of all sublicenses granted. These reports shall not be
required more often than quarterly and shall be in summary form. At the time of
each royalty payment, LICENSEE shall provide a report of the activities subject
to royalty payments hereunder in the form attached hereto and made part hereof
as Exhibit ▇. ▇▇▇▇▇▇▇ Research shall, however, on each anniversary of the
execution of this License Agreement, file a written report with BURF on the
status of its efforts to commercialize the PATENT RIGHTS.
________________________________________________________________________________
*** Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
________________________________________________________________________________
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4.2 Records. LICENSEE and its sublicensees shall keep complete and
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accurate books of account containing all particulars which may be reasonably
necessary for the purpose of showing the royalties payable to BURF. Books of
account shall be kept at LICENSEE'S principal place of business or the principal
place of business of a division of LICENSEE which is marketing LICENSED
PRODUCTS. Books and particulars shall be available during normal business hours,
upon reasonable notice, for two (2) years following the end of the calendar year
to which they pertain, for inspection by an independent certified public
accountant retained by BURF and reasonably acceptable to LICENSEE for the
purpose of verifying LICENSEE royalty statements. Inspection shall be limited
solely to those records directly related to LICENSEE royalty obligations under
this Agreement.
4.3 Audit Costs. If an audit conducted on behalf of BURF pursuant to
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Section 4.2 reveals that LICENSEE has made an error of ten (10%) percent or more
in its favor in any payment due BURF, LICENSEE shall be obligated to pay the
audit fee in connection with the audit, but LICENSEE shall not pay an audit fee
that exceeds eight hours of audit time by an account manager level auditor.
4.4 Marking. LICENSEE and its sublicensees agree to ▇▇▇▇ all LICENSED
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PRODUCTS sold in the United States with all applicable U.S. patent numbers. All
LICENSED PRODUCTS shipped to or sold in other countries shall be marked in such
a manner as to conform with the patent laws and practice of the country to which
such products are shipped or in which such products are sold.
ARTICLE 5 - PATENT PROSECUTION AND ENFORCEMENT
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5.1 Applications. For so long as this Agreement shall be in effect, BURF
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hereby authorizes LICENSEE, and LICENSEE shall, in the name of BURF, at
LICENSEE'S expense, apply for and seek prompt issuance of, and upon issuance,
shall maintain during the Term of this Agreement, patents worldwide as described
in the PATENT RIGHTS, on Exhibit A and on Exhibit B. LICENSEE shall apply all
reasonable efforts to obtain broad patent claims. BURF hereby agrees to take
all actions necessary to cooperate with and assist LICENSEE in the filing and
prosecution of such patent applications. LICENSEE shall keep BURF informed as
to the status of such patent applications including providing BURF with copies
of all written communications with the patent offices and consulting with BURF
on responses to the patent offices in advance of submission. The filing,
continued prosecution and maintenance of patent applications, patents, and
PATENT RIGHTS shall, after consultation with BURF, be within the discretion of
LICENSEE provided, however, if LICENSEE in its discretion elects not to file, or
decides to discontinue prosecution of such patent applications or to discontinue
to maintain a patent which is owned or controlled by BURF, BURF may do so at its
own expense. If LICENSEE decides not to maintain patent applications, patents,
or PATENT RIGHTS already in existence, LICENSEE will give BURF at least ninety
(90) days prior written notice before any expiration date for response or action
required by the U.S. Patent Office or any foreign patent office. LICENSEE will
provide BURF with reasonable cooperation in the maintenance of such patent
applications, patents, or PATENT RIGHTS. BURF shall, however, at its sole
expense, prior to the execution of this Agreement, or as soon thereafter as
possible, file for a United States patent for the Ion Implant measurement by
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picosecond pulse technology. Subsequent prosecution of the patent for Ion
Implant shall be subject to the provisions of this Paragraph 5.1.
5.2 Inventions Funded By Licensee. All inventions, know-how, process
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technology which is currently the property of ▇▇▇▇▇▇▇ Research, or in the future
becomes the property of ▇▇▇▇▇▇▇ Research, shall remain the sole property of
▇▇▇▇▇▇▇ Research. ▇▇▇▇▇▇▇ Research hereby grants to BURF a nontransferable,
royalty-free license to use technology resulting from the License Agreement for
research and academic purposes, but not for any commercial use.
5.3 Enforcement. BURF and LICENSEE shall each give immediate notice to
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the other of any infringement of PATENT RIGHTS by third parties which may come
to their attention. BURF hereby grants LICENSEE, at LICENSEE'S expense, the
right to institute and conduct such legal action against third party infringers
of the PATENT RIGHTS, or enter into such settlement agreements, as are deemed
appropriate by LICENSEE. The benefits of any action taken by LICENSEE shall
first be applied to reimbursing LICENSEE'S reasonable expenses for such action
and then shall be divided equally between BURF and LICENSEE. In any such action,
LICENSEE shall be entitled to join BURF as a party plaintiff and BURF will be
obligated to reasonably assist LICENSEE. Should LICENSEE fail to commence
actions or proceedings against infringers of the PATENT RIGHTS within sixty (60)
days of receiving written notice thereof from BURF, then BURF shall initiate and
pursue such action. If BURF fails to take such action within sixty (60) days of
receiving written notice from LICENSEE, LICENSEE shall again have such right and
authority to take such actions as set forth in this Section 5.
5.4 Additional Intellectual Property. Intellectual Property developed
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subsequent to the effective date of this Agreement shall be the property of the
developing party. Intellectual Property developed solely by ▇▇▇▇▇▇▇ Research
personnel, agents, or consultants, including ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ when he is acting
as a consultant, shall be outside the scope of this Agreement and may be
exploited without accounting to BURF. Intellectual Property developed under the
RESEARCH AGREEMENT between ▇▇▇▇▇▇▇ Research and ▇▇▇▇▇ University shall be
treated as set forth in the RESEARCH AGREEMENT and shall be added from time to
time to Exhibit A or B hereto as appropriate. Intellectual Property developed
jointly by ▇▇▇▇▇ and ▇▇▇▇▇▇▇ Research personnel but not under the RESEARCH
AGREEMENT as, for example, during the course of technology transfer shall be
jointly owned and shall be added to Exhibit B as appropriate. Intellectual
Property developed by ▇▇▇▇▇ independent of the RESEARCH AGREEMENT may, at the
discretion of ▇▇▇▇▇, be offered to ▇▇▇▇▇▇▇ Research for inclusion in Exhibit A.
Anything to the contrary notwithstanding, if during the course of prosecution of
patent applications on inventions listed in Exhibit A, any additions,
continuations, continuations-in-part or other modifications of the original
application are made which involve ▇▇▇▇▇▇▇ Research personnel, agents or
consultants, the inclusion of such personnel, agents or consultants as inventors
will not serve to change the ownership of such patent application from solely
BURF to jointly owned and will not result in any transfer of such Intellectual
Property from Exhibit A to Exhibit B.
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ARTICLE 6 - REPRESENTATIONS AND WARRANTIES
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6.1 Utilization. LICENSEE will use its best efforts to exploit the PATENT
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RIGHTS so that utilization will result therefrom.
6.2 Authority. Each party represents and warrants that it has the right
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and authority to enter this Agreement.
6.3 Exceptions. Nothing in this Agreement shall be construed as:
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(A) conferring rights on BURF to use in advertising, publicity or
otherwise the name of LICENSEE or of its employees, AFFILIATES or sublicensees
without the prior written approval of LICENSEE; and
(B) conferring rights on LICENSEE to use in advertising or publicity
the name of "▇▇▇▇▇ University", "▇▇▇▇▇ University Research Foundation" or their
employees without the prior written approval of BURF.
6.4 Representations and Warranties of BURF. BURF represents and warrants
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to LICENSEE that:
(i) Patent number 4,710,030 is a valid current patent in good
standing;
(ii) BURF is the sole owner of Patent number 4,710,030 and has not
assigned or diminished its rights in the patent by any agreements or
undertakings not set forth herein;
(iii) BURF is, at the date of execution of this Agreement, not aware
of any infringements, claims of infringements, threatened claims of
infringements and/or challenges to all or any claims made under the patent;
(iv) BURF is not aware of any prior claims made by anyone under the
patent;
(v) BURF has full right, title, power and authority to enter into
this Agreement and to comply with the commitments made in this agreement both
now and in the future;
(vi) BURF has no knowledge of any impediments, legal or otherwise,
that would impede, diminish or defeat the full enjoyment of rights sought by
▇▇▇▇▇▇▇ Research pursuant to this Agreement; and
(vii) these warranties by BURF shall be continuing and shall survive
termination of this Agreement.
6.5 Disclaimer. EXCEPT AS EXPRESSLY PROVIDED HEREIN, BURF MAKES NO
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REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE. THE PARTIES ACKNOWLEDGE THAT THIS AGREEMENT
IS NOT A CONSUMER TRANSACTION.
ARTICLE 7 - TERM AND TERMINATION
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7.1 Term. The Term of this Agreement shall run from the date of execution
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of this License Agreement until the date of expiration of the last patent listed
on Exhibits A, B or the PATENT RIGHTS, or unless sooner terminated by virtue of
Article 7.
7.2 Bankruptcy. If LICENSEE undergoes a liquidation in bankruptcy, or
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files a petition for liquidation in bankruptcy, or a receiver, trustee or
assignee for the benefit of creditors, is appointed, whether by the voluntary
act of LICENSEE or otherwise, and if LICENSEE fails to terminate any such
proceeding within one hundred twenty (120) days after its commencement, BURF may
at its election terminate this Agreement upon thirty (30) days written notice to
LICENSEE. LICENSEE agrees to provide written notice to BURF of LICENSEE'S or
third party's intention to file a petition for liquidation of LICENSEE in
bankruptcy prior to such filing, if known.
7.3 Failure to Pay Royalties. Should LICENSEE fail in its payment to BURF
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of royalties which are due in accordance with the terms of this Agreement, BURF
shall serve notice upon LICENSEE by certified mail at an address designated in
Article 11 hereof, of its intention to terminate this Agreement within ninety
(90) days after receipt of said notice of termination unless LICENSEE shall pay
BURF within this ninety (90) day period. If LICENSEE has not paid all royalties
which are due and payable within such ninety (90) day period, the rights,
privileges and license granted hereunder shall terminate at the end of the
ninety (90) day period. If the amount of royalties due is contested by LICENSEE,
the rights, privileges and license granted hereunder shall terminate ninety (90)
days after the resolution of such dispute, but only if the amount due still
remains unpaid at the end of such ninety (90) day period. In the event that
royalties are due after the resolution of such dispute the amount due shall
accrue interest at the average prime rate per annum compounded annually from the
date such amount was due until the amount is paid in full.
7.4 Material Breach. Upon any material breach by LICENSEE, BURF shall have
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the right to terminate this Agreement and the rights and license granted
hereunder by ninety (90) days notice by certified mail to LICENSEE. Such
termination shall become effective at the end of such ninety (90) day period
unless LICENSEE has cured any such material breach prior to the expiration of
the ninety (90) day period.
7.5 Termination by Licensee. LICENSEE may terminate this Agreement upon
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ninety (90) days' notice by certified mail to BURF.
7.6 Obligations on Termination. Upon termination of this Agreement for any
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reason, nothing herein shall be construed to release either party of any
obligation which matured prior to the effective date of such termination, and
LICENSEE may, after the effective date of such termination, complete LICENSED
PRODUCTS in the process of manufacture at the time of such termination and sell
the same together with LICENSED PRODUCTS in inventory for a period of six
months, provided that LICENSEE pays to BURF royalties as required by Article 3
of this Agreement and submits the reports required by Article 4. Nothing
contained herein shall prevent or impede ▇▇▇▇▇▇▇ Research from satisfying
existing contractual commitments at the effective date of termination, or to
prevent ▇▇▇▇▇▇▇ Research from servicing, maintaining and upgrading software,
specifically related to the LICENSED PRODUCT, of existing customers for a period
of not more than one (1) year from the effective date of termination.
7.7 Survival. Articles 5; 6; 8 and 13.2 shall survive termination of this
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Agreement as well as the right of BURF to collect any accrued royalties as
recited in Article 3.
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ARTICLE 8 - INDEMNIFICATION AND INSURANCE
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8.1 Indemnification.
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(a) LICENSEE shall indemnify, defend and hold harmless BURF and ▇▇▇▇▇
and their current or former directors, trustees, officers, faculty, professional
staff, employees, students, and agents and their respective successors, heirs
and assigns (the "Indemnitees"), against any liability, damage, loss or expenses
(including reasonable attorneys' fees and expenses of litigation) incurred by or
imposed upon the Indemnitees or any one of them in connection with any claims,
suits, actions, demands or judgments arising out of any commercial usage of the
PATENT RIGHTS by ▇▇▇▇▇▇▇ Research under any theory of product liability
(including, but not limited to, actions in the form of tort, warranty, or strict
liability) concerning any product, process or service made, used or sold
pursuant to any right or license granted under this Agreement.
(b) LICENSEE agrees, at its own expense, to provide attorneys to
defend against any actions brought or filed against any party indemnified
hereunder with respect to the subject of indemnity contained herein, whether or
not such actions are rightfully brought. LICENSEE shall choose the attorneys and
shall have full control of the prosecution or defense of the litigation,
settlement, appeals or the like. The indemnitees shall render any reasonable
assistance and provide any information requested by LICENSOR, or shall forfeit
their right to be indemnified by ▇▇▇▇▇▇▇ Research.
8.2 Insurance. LICENSEE shall maintain appropriate insurance coverage in
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order to carry out the terms of this License Agreement; including product
liability insurance, workers' compensation insurance and appropriate insurance
for negligent injury to persons or property.
8.3 Sublicense. LICENSEE shall require all of its sublicenses hereunder to
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carry insurance under the same terms as Section 8.2 and to be bound by the same
form of indemnification set forth in Section 8.1.
ARTICLE 9 - ASSIGNMENT
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9.1 BURF agrees that its rights and obligations under this Agreement may
not be transferred or assigned without the prior written consent of LICENSEE.
LICENSEE may assign or otherwise transfer this Agreement and the license granted
hereby and the rights acquired by it hereunder only if such assignment or
transfer is accompanied by a sale or other transfer of LICENSEE'S entire
business to which the license granted hereby relates; provided that any such
assignee or transferee has agreed in writing to be bound by the terms and
provisions of this Agreement. Upon such assignment or transfer and agreement by
such assignee or transferee, the term LICENSEE as used herein shall include such
assignee or transferee.
ARTICLE 10 - EXPORT REQUIREMENTS
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10.1 License to Export. Any and all licenses, permits or other governmental
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approvals for the export of materials, data, know-how, and the like carried out
under this Agreement by LICENSEE shall be the responsibility of LICENSEE.
ARTICLE 11 - PAYMENTS, NOTICES AND COMMUNICATIONS
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11.1 Any payment, notice or other communication pursuant to this Agreement
shall be sufficiently made or given on the date of mailing if sent to such party
by certified, first class mail, postage prepaid, addressed to it at its address
below or as it shall designate by written notice given to the other party:
In the case of BURF: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, Ph.D.,
President
▇▇▇▇▇ University Research Foundation
▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
In the case of Licensee: ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, Ph.D.
President
▇▇▇▇▇▇▇ Research Corporation
▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇
▇.▇. ▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
Copy to: ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, Esq.
c/o ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇
▇ ▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
ARTICLE 12 - BURF SUPPORT
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12.1 Support By BURF. BURF shall render to ▇▇▇▇▇▇▇ Research all reasonable
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support and assistance to facilitate the purposes of this Agreement. BURF shall
list, on Exhibit E, all documentation, drawings or other materials to be
provided by BURF to ▇▇▇▇▇▇▇ Research to efficiently effectuate the purposes of
this License Agreement.
12.2 Secrecy By BURF. BURF shall consider the work undertaken by this
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Agreement as a ▇▇▇▇▇▇▇ Research trade secret. BURF shall not divulge, without
the prior written permission of ▇▇▇▇▇▇▇ Research, any information on the
Project. BURF shall require its employees, contractors and consultants to
maintain and respect ▇▇▇▇▇▇▇ Research's trade secrets and to execute writings
satisfactory by ▇▇▇▇▇▇▇ Research to memorialize such undertakings. The fact of
the existence of the License Agreement is not a trade secret.
12.3 Notice of Indemnification. In the event either party is seeking
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indemnification under this Agreement, such party agrees to: (i) promptly inform
the indemnifying party of any claim, suit or demand threatened or filed; (ii)
permit the indemnifying party to assume direction and control of the defense of
any litigation or claims resulting therefrom (including the right to settle with
the third party); and (iii) cooperate, as requested, in the defense of the
claim, at the expense of the indemnifying party.
ARTICLE 13 - MISCELLANEOUS PROVISIONS
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13.1 Limitation of Liability. Neither party shall be liable to the other
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for any special, consequential, incidental or indirect damages arising out of
this Agreement, however caused, under any theory of liability, except for
tortious injuries to persons.
13.2 Governing Law. This Agreement shall be construed, governed,
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interpreted and applied in accordance with the laws of the State of New Jersey,
except that questions affecting construction and effect of any patent shall be
determined by the law of the country in which the patent was granted.
13.3 Entire Agreement. The parties hereto acknowledge that this instrument
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sets forth the entire agreement and understanding of the parties hereto as to
the subject matter hereof, and shall not be subject to any change or
modification except by the execution of a written instrument subscribed to by
the parties hereto. The Exhibits are incorporated and made part of this
Agreement.
13.4 Severability. The provisions of this Agreement are severable, and in
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the event that any provisions of this Agreement are determined to be invalid or
unenforceable under any controlling body of law, such invalidity or
enforceability shall not in any way affect the validity or enforceability of the
remaining provisions hereof.
13.5 Counterparts. This Agreement may be executed in counterparts. Such
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counterparts taken together shall constitute a fully-executed agreement.
13.6 Descriptive Headings. The descriptive headings of this Agreement are
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for convenience only and shall be of no force or effect in construing or
interpreting any of the provisions of this Agreement.
13.7 Force Majeure. Neither party shall be liable to the other for loss or
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damage or for any default or delay attributable to any act of God, flood, fire,
explosion, shortage of raw materials, casualty or accident, war, civil unrest,
acts of public enemies, blockades or embargo, acts of government, labor unrest,
or any other cause beyond the reasonable control of such party, if the party
affected shall give prompt notice of any such cause to the other party. The
party giving such notice shall thereupon be excused from such of its obligations
hereunder for so long as it is so disabled and for thirty (30) days thereafter.
▇▇▇▇▇ UNIVERSITY RESEARCH ▇▇▇▇▇▇▇ RESEARCH CORPORATION
FOUNDATION
By /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇ By /s/ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇
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Title: President Title: President
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Date: June 28, 1995 Date: August 15, 1995
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EXHIBIT A
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This Exhibit is incorporated in and made part of a License Agreement
between BURF and ▇▇▇▇▇▇▇ Research, dated June 28, 1995.
1. Pursuant to Paragraph 1.6 of the Agreement, the following is a list of
all U.S. and foreign applications based upon the following inventions
(a) U.S. Patent 4,710,030, Optical generator and detector of stress
pulses.
(b) U.S. Patent 5,706,094, Ultrafast optical technique for the
characterization of altered materials
(c) U.S. Patent 5,864,393, Optical method for the determination of
stress in thin films.
(d) U.S. Patent 5,748,317, Apparatus and method for characterizing
thin film and interfaces using an optical heat generator and
detector.
(e) U.S. Patent 5,748,318, Optical stress generator and detector.
(f) U. S. Patent 5,844,684, Optical method for determining the
mechanical properties of a material.
EXHIBIT B
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This Exhibit is incorporated in and made part of a License Agreement
between BURF and ▇▇▇▇▇▇▇ Research, dated June 28, 1995.
1. The jointly-owned inventions by BURF and ▇▇▇▇▇▇▇ Research are as
follows:
(a)
(b)
(c)
EXHIBIT C
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This Exhibit is incorporated in and made part of a License Agreement
between BURF and ▇▇▇▇▇▇▇ Research, dated June 28, 1995.
1. The License(s) referred to in Paragraph 2.2 are annexed hereto.
LICENSE TO THE UNITED STATES GOVERNMENT
This instrument confers to the United States Government, as represented by
the National Science Foundation, a non-exclusive, nontransferable, irrevocable,
paid-up license to practice or have practiced on its behalf throughout the world
the following subject invention:
Invention Title: Laser System to Measure Acoustical Mechanical
Properties of Thin Films
Inventor(s): ▇. ▇▇▇▇▇, J. Tauc, ▇. ▇▇▇▇▇▇▇▇
Patent No.: 4,710,030
Title: Optical Generator and Detector of Stress
Filing Date: May 17, 1985
Country, if other than the U.S.:
This license will extend to all divisions or continuations of the patent
application and all patents or re-issues which may be granted thereon.
This subject invention was made with government support from Grant/Contract
No. DMR-8216726 awarded by the National Science Foundation.
Principal rights to this subject invention have been left with the
LICENSOR: ▇▇▇▇▇ University subject to the provisions of Title 35 USC 200-212, 37
CFR 401, and 45 CFR 8.
Signed: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇ Date: June 20, 1995
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Typed Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Title: President, ▇▇▇▇▇ University Research Foundation
Seal: