EXCLUSIVE LICENSE AGREEMENT BETWEEN THE JOHNS HOPKINS UNIVERSITY SIGN PATH PHARMA JHU Agreement #A11537
Exhibt
10.4
BETWEEN
THE
▇▇▇▇▇ ▇▇▇▇▇▇▇ UNIVERSITY
&
SIGN
PATH PHARMA
JHU
Agreement #A11537
LICENSE
AGREEMENT
THIS
LICENSE AGREEMENT (the “Agreement”) is entered into by and between THE ▇▇▇▇▇
▇▇▇▇▇▇▇ UNIVERSITY, a Maryland corporation having an address at ▇▇▇▇ ▇. ▇▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇▇▇▇-▇▇▇▇ (“JHU”) and Sign Path Pharma, Inc., a
Delaware corporation having an address at ▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
(“Company”), with respect to the following:
RECITALS
WHEREAS,
as a center for research and education, JHU is interested in licensing PATENT
RIGHTS (hereinafter defined) in a manner that will benefit the public by
facilitating the distribution of useful products and the utilization of new
processes, but is without capacity to commercially develop, manufacture, and
distribute any such products or processes; and
WHEREAS,
a valuable invention(s) entitled “Biocompatible “smart” nanogels as carriers for
hydrophobic drugs” (JHU Ref: 5024) was developed during the course of research
conducted by Drs. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇▇ & ▇▇▇▇▇▇ ▇▇▇▇▇ (all
hereinafter, "Inventors"); and
WHEREAS,
JHU has acquired through assignment all rights, title and interest, with the
exception of certain retained rights by the United States Government, in its
interest in said valuable inventions; and
WHEREAS,
Company desires obtain certain rights in such inventions as herein provided, and
to commercially develop, manufacture, use and distribute products and processes
based upon or embodying said valuable inventions throughout the
world;
NOW
THEREFORE, in consideration of the premises and the mutual promises and
covenants contained in this Agreement, and for other good and valuable
consideration, the receipt and sufficiency of which is hereby acknowledged, the
parties hereto agree as follows:
ARTICLE
1
DEFINITIONS
All
references to particular Exhibits, Articles or Paragraphs shall mean the
Exhibits to, and Paragraphs and Articles of, this Agreement, unless otherwise
specified. For the purposes of this Agreement and the Exhibits
hereto, the following words and phrases shall have the following
meanings:
1.1 "AFFILIATED COMPANY"
as used herein in either singular or plural shall mean any
corporation, company, partnership, joint venture or other entity, which
controls, is controlled by or is under common control with
Company. For purposes of this Paragraph 1.1, control shall mean the
direct or indirect ownership of at least fifty- percent (50%).
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1.2 “EFFECTIVE
DATE" of this License Agreement shall mean the date the last party hereto
has executed this Agreement.
1.3 "EXCLUSIVE
LICENSE" shall mean a grant by JHU to Company of its entire right and
interest in the PATENT RIGHTS subject to rights retained by the United States
Government, if any, in accordance with the ▇▇▇▇-▇▇▇▇ Act of 1980 (established by
P.L. 96-517 and amended by P.L. 98-620, codified at 35 USC § 200 et. seq. and
implemented according to 37 CFR Part 401), and subject to the retained right of
JHU to make, have made, provide and use for its and The ▇▇▇▇▇ ▇▇▇▇▇▇▇ Health
Systems' purposes LICENSED PRODUCT(S) and LICENSED SERVICE(S), including the
ability to distribute any biological material disclosed and/or claimed in PATENT
RIGHTS for nonprofit academic research use to non-commercial entities as is
customary in the scientific community. Any biological material
supplied by the Company to JHU shall be for the sole use of
Inventors. Neither the Inventors, nor JHU may provide any Company
Biological Materials to any third party (including non-profits and
universities), without the express written consent of the Company. If
Company approves the use of Biological Materials and they are used in studies,
the credit for the origin of the material shall include the Company’s
name.
1.4 "LICENSED
FIELD" shall mean use of licensed polymeric formulation incorporating
curcumin and curcuminoids for treating cancer and all other medical
indications.
1.5 "LICENSED
PRODUCT(S)" as used herein in either singular or plural shall mean any
process or method, material, compositions, drug, or other product, the
manufacture, use or sale of which would constitute, but for the license granted
to Company pursuant to this Agreement, an infringement of a claim of PATENT
RIGHTS (infringement shall include, but is not limited to, direct, contributory,
or inducement to infringe).
1.6 "LICENSED
SERVICE(S)" as used herein in either singular or plural shall mean the
performance on behalf of a third party of any method or the manufacture of any
product or the use of any product or composition which would constitute, but for
the license granted to Company pursuant to this Agreement, an infringement of a
claim of the PATENT RIGHTS, (infringement shall include, but not be limited to,
direct, contributory or inducement to infringe).
1.7 "NET SALES"
shall mean gross sales revenues and fees billed by Company, AFFILIATED COMPANY
and SUBLICENSEE(S) from the sale of LICENSED PRODUCT(S) less trade discounts
allowed, refunds, returns and recalls, and sales taxes. In the event
that Company, AFFILIATED COMPANY and SUBLICENSEE(S) sells a LICENSED PRODUCT(S)
in combination with other ingredients or substances or as part of a kit, the NET
SALES for purposes of royalty payments shall be based on the sales revenues and
fees received in proportion to the contribution of the JHU PATENT
RIGHTS to the kit or the combined product
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1.8 "NET SERVICE
REVENUES" shall mean gross service revenues and fees billed by Company,
AFFILIATED COMPANY and SUBLICENSEE(S) for the performance of LICENSED SERVICE(S)
less sales and/or use taxes imposed upon and with specific reference to the
LICENSED SERVICE(S). In the event that Company, AFFILIATED COMPANY or
SUBLICENSEE(S) sells a LICENSED SERVICE(S) in combination with other services or
substances or as part of a kit, the NET SERVICE REVENUES for purposes of royalty
payments shall be based on the sales revenues and fees received in proportion to
that received from the licensed product.
1.9 "PATENT RIGHTS"
shall mean the U.S. patent application Serial No. 60,866/516, filed on November
20th, 2006,
and assigned to JHU entitled “Biocompatible "smart" nanogels as carriers for
hydrophobic drugs” and the invention disclosed and claimed therein, and all
continuations, divisions, and reissues based thereof, and any corresponding
foreign patent applications, and any patents, or other equivalent foreign PATENT
RIGHTS issuing, granted or registered thereon.
1.10 “SUBLICENSEE(S)”
as used herein in either singular or plural shall mean any person or
entity other than an AFFILIATED COMPANY to which Company has granted a
sublicense under this Agreement.
ARTICLE
2
LICENSE
GRANT
2.1 Grant. Subject to
the terms and conditions of this Agreement, JHU hereby grants to Company an
EXCLUSIVE LICENSE to make, have made, use, import, offer for sale and sell the
LICENSED PRODUCT(S) and to provide the LICENSED SERVICE(S) in the United States
and worldwide under the PATENT RIGHTS in the LICENSED FIELD. This Grant shall apply
to the Company and any AFFILIATED COMPANY, except that any AFFILIATED COMPANY
shall not have the right to sublicense others as set forth in Paragraph 2.2
below. If any AFFILIATED COMPANY exercises rights under this
Agreement, such AFFILIATED COMPANY shall be bound by all terms and conditions of
this Agreement, including but not limited to indemnity and insurance provisions
and royalty payments, which shall apply to the exercise of the rights, to the
same extent as would apply had this Agreement been directly between JHU and the
AFFILIATED COMPANY. In addition, Company shall remain fully liable to
JHU for all acts and obligations of AFFILIATED COMPANY such that acts of the
AFFILIATED COMPANY shall be considered acts of the Company.
2.2 Sublicense. Company
may sublicense to others under this Agreement, subject to the terms and
conditions of this Paragraph. As a condition to its validity and enforceability,
each sublicense agreement shall: (a) incorporate by reference the terms and
conditions of this Agreement, (b) be consistent with the terms, conditions and
limitations of this Agreement, (c) prohibit SUBLICENSEE’s further sublicense of
the rights delivered hereunder, (d) name JHU as an intended third party
beneficiary of the obligations of SUBLICENSEE without imposition of obligation
or liability on the part of JHU or its Inventors to the SUBLICENSEE, (e)
specifically incorporate Paragraphs 6.2 “Representations by JHU”, 7.1
“Indemnification”, 10.1 “Use of Name”, 10.4 “Product Liability” into
the body of the sublicense agreement, and cause the terms used in therein to
have the same meaning as in this Agreement, and, (f) bear signature from JHU
indicating JHU’s review and approval of the sublicense
agreement. Company shall provide to JHU each proposed sublicense
agreement, executed by both Company and proposed SUBLICENSEE, for review,
approval and signature by JHU. To the extent that any terms,
conditions or limitations of any sublicense agreement are inconsistent with this
Agreement, those terms, conditions and limitations are null and void against
JHU, even though JHU has approved the sublicense in writing.
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2.3 Government
Rights. The United States Government may have acquired a
nonexclusive, nontransferable, irrevocable, paid-up license to practice or have
practiced for or on behalf of the United States the inventions described in
PATENT RIGHTS throughout the world. The rights granted herein are
additionally subject to: (i) the requirement that any LICENSED PRODUCT(S)
produced for use or sale within the United States shall be substantially
manufactured in the United States (unless a waiver under 35 U.S.C. § 204 or
equivalent is granted by the appropriate United States government agency), (ii)
the right of the United States government to require JHU, or its licensees,
including Company, to grant sublicenses to responsible applicants on reasonable
terms when necessary to fulfill health or safety needs, and, (iii) other rights
acquired by the United States government under the laws and regulations
applicable to the grant/contract award under which the inventions were
made. JHU shall use reasonable efforts to address the status of the
extent to which the United States government has rights, if any, with regard to
support for the inventions described in PATENT RIGHTS prior to signing this
Agreement. The Company intends to synthesize the product and
formulate it in the United States, however, economic realities may require a
foreign provider of pure substance and formulation, in which event JHU shall
support the Company in obtaining a waiver or equivalency from the United States
Government.
ARTICLE
3
FEES,
ROYALTIES, & PAYMENTS
3.1 License
Fee. Company shall pay to JHU within thirty (30) days of the
EFFECTIVE DATE of this Agreement a license fee as set forth in Exhibit A, which is
nonrefundable and shall not be credited against royalties or other
fees. JHU will not submit an invoice for the license
fee.
3.2 Minimum Annual
Royalties. Company shall pay to JHU minimum annual royalties
as set forth in Exhibit
A. These minimum annual royalties shall be due, without
invoice from JHU, within thirty (30) days of each anniversary of the EFFECTIVE
DATE beginning with the first anniversary. Running royalties accrued
under Paragraph 3.3 and paid to JHU during the one year period preceding an
anniversary of the EFFECTIVE DATE shall be credited against the minimum annual
royalties due on that anniversary date.
3.3 Running
Royalties. Company shall pay to JHU a running royalty as set
forth in Exhibit
A, for each LICENSED PRODUCT(S) sold, and for each LICENSED SERVICE(S)
provided, by Company, AFFILIATED COMPANIES and SUBLICENSEE(S), based on NET
SALES and NET SERVICE REVENUES for the term of this Agreement. Such
payments shall be made quarterly. All non-US taxes related to
LICENSED PRODUCT(S) or LICENSED SERVICE(S) sold under this Agreement shall be
paid by Company and shall not be deducted from royalty or other payments due to
JHU.
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In order
to insure JHU the full royalty payments contemplated hereunder, Company agrees
that in the event any LICENSED PRODUCT(S) shall be sold to an AFFILIATED COMPANY
or SUBLICENSEE(S) or to a corporation, firm or association with which Company
shall have any agreement, understanding or arrangement with respect to
consideration (such as, among other things, an option to purchase stock or
actual stock ownership, or an arrangement involving division of profits or
special rebates or allowances) the royalties to be paid hereunder for such
LICENSED PRODUCT(S) shall be based upon the greater of: 1) the net selling price
(per NET SALES) at which the purchaser of LICENSED PRODUCT(S) resells such
product to the end user, 2) the NET SERVICE REVENUES received from using the
LICENSED PRODUCT(S) in providing a service, 3) the fair market value of the
LICENSED PRODUCT(S) or 4) the net selling price (per NET SALES) of LICENSED
PRODUCT(S) paid by the purchaser.
3.4 Development
Milestones. Company shall pay to JHU upon reaching certain
development milestones as set forth in Exhibit A regardless
of whether the milestone is achieved by licensee, a sublicensee or
affiliate.
3.5 Sublicense
Consideration. In addition to the running royalty as set forth
under Paragraph 3.3, Company shall pay to JHU a percentage of consideration
received for sublicenses under this Agreement as set forth in Exhibit
A. This sublicense consideration shall be due, without the
need for invoice from JHU, within forty-five (45) days of the effective date of
each sublicense agreement. Such consideration shall mean
consideration of any kind received by the Company or AFFILIATED COMPANIES from a
SUBLICENSEE(S) for the grant of a sublicense under this Agreement, such as
upfront fees or milestone fees and including any premium paid by the
SUBLICENSEE(S) over Fair Market Value for stock of the Company or an AFFILIATED
COMPANY in consideration for such sublicense. However, not included in such
sublicense consideration are amounts paid to the Company or an AFFILIATED
COMPANY by the SUBLICENSEE(S) for running royalties on LICENSED PRODUCT(S) and
LICENSED SERVICE(S), product development, research work, clinical studies and
regulatory approvals performed by or for the Company or AFFILIATED COMPANIES
(including third parties on their behalf), each pursuant to a specific agreement
including a performance plan and commensurate budget. The term "Fair
Market Value" shall mean the average price that the stock in question is
publicly trading at for twenty (20) days prior to the announcement of its
purchase by the SUBLICENSEE(S) or if the stock is not publicly traded, the value
of such stock as determined by the most recent private financing through a
financial investor (an entity whose sole interest in the Company or AFFILIATED
COMPANY is financial) of the Company or AFFILIATED COMPANY that issued the
shares. If the company receives stock as part of payment in sublicense the
company can pay JHU the sublicense consideration in stock.
3.6 Patent
Reimbursement. Company will reimburse JHU, within thirty (30)
days of the receipt of an invoice from JHU, for all reasonable costs associated
with the preparation, filing, maintenance, and prosecution of PATENT RIGHTS
incurred by JHU on or before the EFFECTIVE DATE of this Agreement. In accordance
with Paragraph 4.1 below, Company will reimburse JHU, within thirty (30) days of
the receipt of an invoice from JHU, for all costs associated with the
preparation, filing, maintenance, and prosecution of PATENT RIGHTS incurred by
JHU subsequent to the EFFECTIVE DATE of this Agreement.
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3.7 Sponsored
Research. Company shall provide sponsored research funding for the
completion of preclinical studies necessary to file an IND on the licensed
product containing nano curcumin as set forth in Exhibit
A.
3.8 Form of
Payment. All payments under this Agreement shall be made in
U.S. Dollars. Checks are to be made payable to “The ▇▇▇▇▇ ▇▇▇▇▇▇▇
University". Wire transfers may be made through:
Director
▇▇▇▇▇
▇▇▇▇▇▇▇ University
Technology
Transfer
▇▇▇ ▇.
▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇
▇▇▇▇▇
▇▇▇▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇
Attn:
JHU Agr ID # A11537
Wire transfers may be made
through:
Bank of
America
NY,
NY
Wire
info:
▇▇▇▇▇
▇▇▇▇▇▇▇ University Central Lockbox
Transit/Routing/ABA
number: ▇▇▇▇▇▇▇▇▇
SWIFT
code: B0FAUS3N
CHIP ABA
number: none
Account
number: 003936830516
Type of
account: Depository
Reference:
JHU Technology Transfer JHU Agrmt# A11537
Attn: financial
manager
COMPANY
shall be responsible for any and all costs associated with wire
transfers.
3.8 Late
Payments. In the event that any payment due hereunder is not
made when due, the payment shall accrue interest beginning on the tenth day
following the due date thereof, calculated at the annual rate of the sum of (a)
two percent (2%) plus (b) the prime interest rate quoted by The Wall Street
Journal on the date said payment is due, the interest being compounded on the
last day of each calendar quarter, provided however, that in no event shall said
annual interest rate exceed the maximum legal interest rate for
corporations. Each such payment when made shall be accompanied by all
interest so accrued. Said interest and the payment and acceptance
thereof shall not negate or waive the right of JHU to seek any other remedy,
legal or equitable, to which it may be entitled because of the delinquency of
any payment including, but not limited to termination of this Agreement as set
forth in Paragraph 9.2.
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ARTICLE
4
PATENT
PROSECUTION, MAINTENANCE, & INFRINGEMENT
4.1 Prosecution &
Maintenance. JHU, at Company's expense, shall file, prosecute
and maintain all patents and patent applications specified under PATENT RIGHTS
and, subject to the terms and conditions of this Agreement, Company shall be
licensed thereunder. Title to all such patents and patent
applications shall reside in JHU. JHU shall have full and complete
control over all patent matters in connection therewith under the PATENT RIGHTS,
provided however, that JHU shall (a) cause its patent counsel to timely copy
Company on all official actions and written correspondence with any patent
office, and (b) allow Company an opportunity to comment and advise
JHU. JHU shall consider and reasonably incorporate all comments and
advice. By concurrent written notification to JHU and its patent
counsel at least thirty (30) days in advance (or later at JHU’s discretion) of
any filing or response deadline, or fee due date, Company may elect not to have
a patent application filed in any particular country or not to pay expenses
associated with prosecuting or maintaining any patent application or patent,
provided that Company pays for all costs incurred up to JHU’s receipt of such
notification. Failure to provide such notification can be considered
by JHU to be Company’s authorization to proceed at Company’s
expense. Upon such notification, JHU may file, prosecute, and/or
maintain such patent applications or patent at its own expense and for its own
benefit, and any rights or license granted hereunder held by Company, AFFILIATED
COMPANIES or SUBLICENSEE(S) relating to the PATENT RIGHTS which comprise the
subject of such patent applications or patent and/or apply to the particular
country, shall terminate.
4.2 Notification. Each
party will notify the other promptly in writing when any infringement of a claim
in any of the patent applications or patents by another is uncovered or
suspected.
4.3 Infringement. Company
shall have the first right to enforce any patent within PATENT RIGHTS against
any infringement or alleged infringement thereof, and shall at all times keep
JHU informed as to the status thereof. Before Company commences an action with
respect to any infringement of such patents, Company shall give careful
consideration to the views of JHU and to potential effects on the public
interest in making its decision whether or not to ▇▇▇. Thereafter,
Company may, at its own expense, institute suit against any such infringer or
alleged infringer and control and defend such suit in a manner consistent with
the terms and provisions hereof and recover any damages, awards or settlements
resulting therefrom, subject to Paragraph 4.5. However, no
settlement, consent judgment or other voluntary final disposition of the suit
may be entered into without the prior written consent of JHU, which consent
shall not be unreasonably withheld. This right to ▇▇▇ for
infringement shall not be used in an arbitrary or capricious
manner. JHU shall reasonably cooperate in any such litigation at
Company's expense.
If
Company elects not to enforce any patent within the PATENT RIGHTS, then it shall
so notify JHU in writing within ninety (90) days of receiving a legal opinion
that an infringement exists, and JHU may, in its sole judgment and at its own
expense, take steps to enforce any patent and control, settle, and defend such
suit in a manner consistent with the terms and provisions hereof, and recover,
for its own account, any damages, awards or settlements resulting
therefrom.
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4.4 Patent
Invalidity Suit. If a declaratory judgment
action is brought naming Company as a defendant and alleging invalidity of any
of the PATENT RIGHTS, JHU may elect to take over the sole defense of the action
at its own expense. Company shall cooperate fully with JHU in connection with
any such action.
4.5 Recovery. Any
recovery by Company under Paragraph 4.3 shall be deemed to reflect loss of
commercial sales, and Company shall pay to JHU fifteen percent (15%) of the
recovery net of all reasonable costs and expenses associated with each suit or
settlement. If the cost and expenses exceed the recovery, then
one-half (1/2) of the excess shall be credited against royalties payable by
Company to JHU hereunder in connection with sales of LICENSED PRODUCT covered in
the PATENT RIGHTS which are the subject of the infringement suit, in the country
of such legal proceedings, provided, however, that any such credit under this
Paragraph shall not exceed fifty percent (50%) of the royalties otherwise
payable to JHU with regard to sales in the country of such action in any one
calendar year, with any excess credit being carried forward to future calendar
years.
ARTICLE
5
OBLIGATIONS
OF THE PARTIES
5.1 Reports. Company
shall provide to JHU the following written reports according to the following
schedules.
(a)
Company shall provide quarterly Royalty Reports, substantially in the format of
Exhibit B and
due within thirty (30) days of the end of each calendar quarter following the
EFFECTIVE DATE of this Agreement. Royalty Reports shall disclose the
amount of LICENSED PRODUCT(S) and LICENSED SERVICE(S) sold, the total NET SALES
and NET SERVICE REVENUES of such LICENSED PRODUCT(S) and LICENSED SERVICE(S),
and the running royalties due to JHU as a result of NET SALES and NET SERVICE
REVENUES by Company, AFFILIATED COMPANIES and SUBLICENSEE(S)
thereof. Payment of any such royalties due shall accompany such
Royalty Reports.
(b) Until
Company, an AFFILIATED COMPANY or a SUBLICENSEE(S) has achieved a first
commercial sale of a LICENSED PRODUCT or LICENSED SERVICE, or received FDA market
approval, Company shall provide semiannual diligence reports, due within thirty
(30) days of the end of every June and December following the EFFECTIVE DATE of
this Agreement. These diligence reports shall describe Company's, AFFILIATED
COMPANIES or any SUBLICENSEE(S)'s technical efforts towards meeting its
obligations under the terms of this Agreement.
(c)
Company shall provide Annual Reports within thirty (30) days of the end of every
December following the EFFECTIVE DATE of this Agreement. Annual
Reports shall mean and include:
(i)
evidence of insurance as required under Paragraph 10.4, or, a statement of why
such insurance is not currently required, and
Page 8 of
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(ii)
identification of all AFFILIATED COMPANIES which have exercised rights pursuant
to Paragraph 2.1, or, a statement that no AFFILIATED COMPANY has exercised such
rights, and
(iii)
notice of all FDA approvals of any LICENSED PRODUCT(S) or LICENSED SERVICE(S)
obtained by COMPANY, AFFILIATED COMPANY or SUBLICENSEE, the patent(s) or patent
application(s) licensed under this Agreement upon which such product or service
is based, and the commercial name of such product or service, or, in the
alternative, a statement that no FDA approvals have been obtained.
5.2 Records. Company
shall make and retain, for a period of three (3) years following the period of
each report required by Paragraph 5.1, true and accurate records, files and
books of account containing all the data reasonably required for the full
computation and verification of sales and other information required in
Paragraph 5.1. Such books and records shall be in accordance with
generally accepted accounting principles. Company shall permit the
inspection and copying of such records, files and books of account by JHU or its
agents during regular business hours upon ten (10) business days' written notice
to Company. Such inspection shall not be made more than once each
calendar year. All costs of such inspection and copying shall be paid
solely by JHU, provided that if any such inspection shall reveal that an error
has been made in the amount equal to five percent (5%) or more of such payment,
such costs shall be borne by Company. As a condition to entering into
any such agreement, Company shall include in any agreement with its AFFILIATED
COMPANIES or its SUBLICENSEE(S) which permits such party to make, use, sell or
import the LICENSED PRODUCT(S) or provide LICENSED
SERVICE(S), a provision requiring such party to retain records of sales of
LICENSED PRODUCT(S) and records of LICENSED SERVICE(S) and other information as
required in Paragraph 5.1 and permit JHU to inspect such records as required by
this Paragraph.
5.3 Reasonable Commercial
Efforts. Company shall exercise reasonable commercial efforts
to develop and to introduce the LICENSED PRODUCT(S) and LICENSED SERVICE(S) into
the commercial market as soon as practicable, consistent with sound and
reasonable business practice and judgement; thereafter, until the expiration or
termination of this Agreement, Company shall endeavor to keep LICENSED
PRODUCT(S) and LICENSED SERVICE(S) reasonably available to the
public. LICENSED PRODUCTS and LICENSED SERVICES will be made
available to the public and research community by the Company. JHU
will release such products or Services with approval by the company, and will
not withhold approval unreasonably Company shall also exercise
reasonable commercial efforts to develop LICENSED PRODUCT(S) suitable for
different medical indications, so that the PATENT RIGHTS can be commercialized
as broadly and as rapidly as good scientific and business judgment deem
possible.
5.4 Other
Products. After clinical or other evidence, provided in
writing by JHU or by another party, to Company, demonstrating the practicality
of a particular market or use within the LICENSED FIELD which is not being
developed or commercialized by Company, Company shall based on comercially
reasonable efforts either provide JHU with a reasonable development plan and
start development or attempt to reasonably sublicense the particular market or
use to a third party. If within twelve (12) months of such
notification by JHU, Company has not initiated such development efforts or
sublicensed that particular market or use, JHU may terminate this license for
such particular market or use. This Paragraph shall not be applicable
if Company reasonably demonstrates to JHU that commercializing such LICENSED
PRODUCT(S) or LICENSED SERVICE(S) or granting such a sublicense in said market
or use would have a potentially adverse commercial effect upon marketing or
sales of the LICENSED PRODUCT(S) or LICENSED SERVICE(S) developed and being sold
by Company, such acknowlegement by JHU shall not be unreasonable
withheld. Any and all curcumins, curcumin derivatives or curcuminoids
that can be incorporated into the JHU nanotechnology are within the scope of
this Agreement.
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5.5 Patent
Acknowledgement. Company agrees that all packaging containing
individual LICENSED PRODUCT(S) sold by Company,
AFFILIATED COMPANIES and SUBLICENSEE(S) of Company will be marked with the
number of the applicable patent(s) licensed hereunder in accordance with each
country's patent laws. The company shall have the right to prosecute
patent CIPs where reasonable.
ARTICLE
6
REPRESENTATIONS
6.1 Duties of the
Parties. JHU is not a commercial organization. It
is an institute of research and education. Therefore, JHU has no
ability to evaluate the commercial potential of any PATENT RIGHTS or LICENSED
PRODUCT or other license or rights granted in this Agreement. It is
therefore incumbent upon Company to evaluate the rights and products in
question, to examine the materials and information provided by JHU, and to
determine for itself the validity of any PATENT RIGHTS, its freedom to operate,
and the value of any LICENSED PRODUCTS or SERVICES or other rights
granted.
6.2 Representations by
JHU. JHU warrants that it has good and marketable title to its
interest in the inventions claimed under PATENT RIGHTS with the exception of
certain retained rights of the United States Government, which may apply if any
part of the JHU research was funded in whole or in part by the United States
Government. JHU will provide copies of each Assignment from the
inventors to JHU in Exhibit C. JHU does not warrant the validity of
any patents or that practice under such patents shall be free of
infringement. EXCEPT AS EXPRESSLY SET FORTH IN THIS PARAGRAPH 6.2,
COMPANY, AFFILIATED COMPANIES AND SUBLICENSEE(S) AGREE THAT THE PATENT RIGHTS
ARE PROVIDED "AS IS", AND THAT JHU MAKES NO REPRESENTATION OR WARRANTY WITH
RESPECT TO THE PERFORMANCE OF LICENSED PRODUCT(S) AND LICENSED SERVICE(S)
INCLUDING THEIR SAFETY, EFFECTIVENESS, OR COMMERCIAL VIABILITY. JHU
DISCLAIMS ALL WARRANTIES WITH REGARD TO PRODUCT(S) AND SERVICE(S) LICENSED UNDER
THIS AGREEMENT, INCLUDING, BUT NOT LIMITED TO, ALL WARRANTIES, EXPRESSED OR
IMPLIED, OF MERCHANTABILITY AND FITNESS FOR ANY PARTICULAR
PURPOSE. NOTWITHSTANDING ANY OTHER PROVISION OF THIS AGREEMENT, JHU
ADDITIONALLY DISCLAIMS ALL OBLIGATIONS AND LIABILITIES ON THE PART OF JHU AND
INVENTORS, FOR DAMAGES, INCLUDING, BUT NOT LIMITED TO, DIRECT, INDIRECT,
SPECIAL, AND CONSEQUENTIAL DAMAGES, ATTORNEYS' AND EXPERTS' FEES, AND COURT
COSTS (EVEN IF JHU HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES, FEES OR
COSTS), ARISING OUT OF OR IN CONNECTION WITH THE MANUFACTURE, USE, OR SALE OF
THE PRODUCT(S) AND SERVICE(S) LICENSED UNDER THIS AGREEMENT. COMPANY,
AFFILIATED COMPANIES AND SUBLICENSEE(S) ASSUME ALL RESPONSIBILITY AND LIABILITY
FOR LOSS OR DAMAGE CAUSED BY A PRODUCT AND/OR SERVICE MANUFACTURED, USED, OR
SOLD BY COMPANY, ITS SUBLICENSEE(S) AND AFFILIATED COMPANIES WHICH IS A LICENSED
PRODUCT(S) OR LICENSED SERVICE(S) AS DEFINED IN THIS AGREEMENT.
Page 10
of 21
ARTICLE
7
INDEMNIFICATION
7.1 Indemnification. JHU
and the Inventors will have no legal liability exposure to third parties if JHU
does not license the LICENSED PRODUCT(S) and LICENSED SERVICE(S), and any
royalties JHU and the Inventors may receive is not adequate compensation for
such legal liability exposure. Therefore, JHU requires Company to
protect JHU and Inventors from such exposure to the same manner and extent to
which insurance, if available, would protect JHU and
Inventors. Furthermore, JHU and the Inventors will not, under the
provisions of this Agreement or otherwise, have control over the manner in which
Company or its AFFILIATED COMPANIES or its SUBLICENSEE(S) or those operating for
its account or third parties who purchase LICENSED PRODUCT(S) or LICENSED
SERVICE(S) from any of the foregoing entities, develop, manufacture, market or
practice the inventions of LICENSED PRODUCT(S) and LICENSED
SERVICE(S). Therefore, Company, AFFILIATED COMPANY and SUBLICENSEE
shall indemnify, defend with counsel reasonably acceptable to JHU, and hold JHU,
The ▇▇▇▇▇ ▇▇▇▇▇▇▇ Health Systems, their present and former trustees, officers,
Inventors of PATENT RIGHTS, agents, faculty, employees and students harmless as
against any judgments, fees, expenses, or other costs arising from or incidental
to any product liability or other lawsuit, claim, demand or other action brought
as a consequence of the practice of said inventions by any of the foregoing
entities, whether or not JHU or said Inventors, either jointly or severally, is
named as a party defendant in any such lawsuit and whether or not JHU or the
Inventors are alleged to be negligent or otherwise responsible for any injuries
to persons or property. Practice of the inventions covered by
LICENSED PRODUCT(S) and LICENSED SERVICE(S), by an AFFILIATED COMPANY or an
agent or a SUBLICENSEE(S) or a third party on behalf of or for the account of
Company or by a third party who purchases LICENSED PRODUCT(S) and LICENSED
SERVICE(S) from Company, shall be considered Company's practice of said
inventions for purposes of this Paragraph. The obligation of Company
to defend and indemnify as set out in this Paragraph shall survive the
termination of this Agreement, shall continue even after assignment of rights
and responsibilities to an affiliate or sublicensee, and shall not be limited by
any other limitation of liability elsewhere in this Agreement.
ARTICLE
8
CONFIDENTIALITY
8.1 Confidentiality. If
necessary, the parties will exchange information, which they consider to be
confidential. The recipient of such information agrees to accept the
disclosure of said information which is marked as confidential at the time it is
sent to the recipient, and to employ all commercially reasonable efforts to
maintain the information secret and confidential, such efforts to be no less
than the degree of care employed by the recipient to preserve and safeguard its
own confidential information. The information shall not be disclosed
or revealed to anyone except employees of the recipient who have a need to know
the information and who have entered into a secrecy agreement with the recipient
under which such employees are required to maintain confidential the proprietary
information of the recipient and such employees shall be advised by the
recipient of the confidential nature of the information and that the information
shall be treated accordingly.
Page 11
of 21
The
obligations of this Paragraph shall also apply to AFFILIATED COMPANIES and/or
SUBLICENSEE(S) provided such information by Company. JHU's,
Company's, AFFILIATED COMPANIES, and SUBLICENSEES' obligations under this
Paragraph shall extend until three (3) years after the termination of this
Agreement.
8.2 Exceptions. The
recipient's obligations under Paragraph 8.1 shall not extend to any part of the
information:
|
|
a.
|
that
can be demonstrated to have been in the public domain or publicly known
and readily available to the trade or the public prior to the date of the
disclosure; or
|
|
|
b.
|
that
can be demonstrated, from written records to have been in the recipient's
possession or readily available to the recipient from another source not
under obligation of secrecy to the disclosing party prior to the
disclosure; or
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|
|
c.
|
that
becomes part of the public domain or publicly known by publication or
otherwise, not due to any unauthorized act by the recipient;
or
|
|
|
d.
|
that
is demonstrated from written records to have been developed by or for the
receiving party without reference to confidential information disclosed by
the disclosing party.
|
|
|
that
is required to be disclosed by law, government regulation or court
order.
|
8.3 Right to
Publish. JHU may publish manuscripts, abstracts or the like
describing the PATENT RIGHTS and inventions contained therein provided
confidential information of Company as defined in Paragraph 8.1, is not included
or without first obtaining approval from Company to include such confidential
information. The company shall have up to 90 days to evaluate for patent
potential and filing of patent. Otherwise, JHU and the Inventors shall be free
to publish manuscripts and abstracts or the like directed to the work done at
JHU related to the licensed technology without prior approval.
Page 12
of 21
ARTICLE
9
TERM
& TERMINATION
9.1 Term. The term of this
Agreement shall commence on the EFFECTIVE DATE and shall continue, in each
country, until the date of expiration of the last to expire patent included
within PATENT RIGHTS in that country or if no patents issue then for a term of
twenty (20) years from the EFFECTIVE DATE of this Agreement.
9.2 Termination
By Either
Party. This Agreement may be terminated by either party, in
the event that the other party (a) files or has filed against it a petition
under the Bankruptcy Act, makes an assignment for the benefit of creditors, has
a receiver appointed for it or a substantial part of its assets, or otherwise
takes advantage of any statute or law designed for relief of debtors or (b)
fails to perform or otherwise breaches any of its obligations hereunder, if,
following the giving of notice by the terminating party of its intent to
terminate and stating the grounds therefor, the party receiving such notice
shall not have cured the failure or breach within thirty (30)
days. In no event, however, shall such notice or intention to
terminate be deemed to waive any rights to damages or any other remedy which the
party giving notice of breach may have as a consequence of such failure or
breach.
9.3 Termination by
Company. Company may terminate this Agreement and the license
granted herein, for any reason, upon giving JHU ninety (90) days written
notice.
9.4 Obligations and Duties
upon Termination. If this Agreement is terminated, both
parties shall be released from all obligations and duties imposed or assumed
hereunder to the extent so terminated, except as expressly provided to the
contrary in this Agreement. Upon termination, both parties shall
cease any further use of the confidential information disclosed to the receiving
party by the other party. Termination of this Agreement, for whatever
reason, shall not affect the obligation of either party to make any payments for
which it is liable prior to or upon such termination. Termination shall not
affect JHU's right to recover unpaid royalties, fees, reimbursement
for patent expenses, or other forms of financial compensation incurred prior to
termination. Upon receipt of written termination, JHU shall take
affirmative steps to mitigate any further costs to Company. Upon
termination Company shall submit a final royalty report to JHU and any royalty
payments, fees, unreimbursed patent expenses and other financial compensation
due JHU shall become immediately payable. Furthermore, upon
termination of this Agreement, all rights in and to the licensed technology
shall revert immediately to JHU at no cost to JHU. Upon termination
of this Agreement, any SUBLICENSEE(S) shall become a direct licensee of JHU,
provided that JHU’s obligations to SUBLICENSEE(S) are no greater than JHU’s
obligations to Company under this Agreement. Company shall provide
written notice of such to each SUBLICENSEE(S) with a copy of such notice
provided to JHU.
ARTICLE
10
MISCELLANEOUS
10.1 Use of
Name. Company, AFFILIATED COMPANIES and SUBLICENSEE(S) shall
not use the name of The ▇▇▇▇▇ ▇▇▇▇▇▇▇ University or The ▇▇▇▇▇ ▇▇▇▇▇▇▇ Health
System or any of its constituent parts, such as the ▇▇▇▇▇ ▇▇▇▇▇▇▇ Hospital or
any contraction thereof or the name of Inventors in any advertising,
promotional, sales literature or fundraising documents without prior written
consent from an authorized representative of JHU. Company, AFFILIATED
COMPANIES and SUBLICENSEE(S) shall allow at least seven (7) business days notice
of any proposed public disclosure for JHU's review and comment or to provide
written consent.
Page 13
of 21
10.2 No
Partnership. Nothing in this Agreement shall be construed to
create any agency, employment, partnership, joint venture or similar
relationship between the parties other than that of a
licensor/licensee. Neither party shall have any right or authority
whatsoever to incur any liability or obligation (express or implied) or
otherwise act in any manner in the name or on the behalf of the other, or to
make any promise, warranty or representation binding on the other.
10.3 Notice of
Claim. Each party shall give the other or its representative
immediate notice of any suit or action filed, or prompt notice of any claim
made, against them arising out of the performance of this Agreement or arising
out of the practice of the inventions licensed hereunder.
10.4 Product
Liability. Prior to initial human testing or first commercial
sale of any LICENSED PRODUCT(S) or LICENSED SERVICE(S) as the case may be in any
particular country, Company shall establish and maintain, in each country in
which Company, an AFFILIATED COMPANY or SUBLICENSEE(S) shall test or sell
LICENSED PRODUCT(S) and LICENSED SERVICE(S), product liability or other
appropriate insurance coverage in the minimum amount of five million dollars
($5,000,000) per claim and will annually present evidence to JHU that such
coverage is being maintained. Upon JHU's request, Company will
furnish JHU with a Certificate of Insurance of each product liability insurance
policy obtained. JHU shall be listed as an additional insured in
Company's said insurance policies. If such Product Liability
insurance is underwritten on a ‘claims made’ basis, Company agrees that any
change in underwriters during the term of this Agreement will require the
purchase of ‘prior acts’ coverage to ensure that coverage will be continuous
throughout the term of this Agreement.
10.5 Governing
Law. This Agreement shall be construed, and legal relations
between the parties hereto shall be determined, in accordance with the laws of
the State of Delaware applicable to contracts solely executed and wholly to be
performed within the State of Delaware without giving effect to the principles
of conflicts of laws. Any disputes between the parties to the
Agreement shall be brought in the state or federal courts of
Delaware. Both parties agree to waive their right to a jury
trial
10.6 Notice. All
notices or communication required or permitted to be given by either party
hereunder shall be deemed sufficiently given if mailed by registered mail or
certified mail, return receipt requested, or sent by overnight courier, such as
Federal Express, to the other party at its respective address set forth below or
to such other address as one party shall give notice of to the other from time
to time hereunder. Mailed notices shall be deemed to be received on
the third business day following the date of mailing. Notices sent by
overnight courier shall be deemed received the following business
day.
Page 14
of 21
|
If
to Company:
|
Attn: ▇▇. ▇▇▇▇▇
▇▇▇▇▇▇
|
|
Sign
Path Pharma, Inc.
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|
|
▇▇
▇▇▇▇▇▇▇▇
|
|
|
▇▇▇
▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
|
|
|
If
to JHU:
|
Technology
Transfer
|
|
▇▇▇▇▇
▇▇▇▇▇▇▇ University
|
|
|
▇▇▇
▇. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
|
|
|
▇▇▇
▇▇▇▇▇
|
|
|
▇▇▇▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇
|
|
|
Attn:
Director
|
10.7 Compliance with All
Laws. In all activities undertaken pursuant to this Agreement,
both JHU and Company covenant and agree that each will in all material respects
comply with such Federal, state and local laws and statutes, as may be in effect
at the time of performance and all valid rules, regulations and orders thereof
regulating such activities.
10.8 Successors and
Assigns. Neither this Agreement nor any of the rights or
obligations created herein, except for the right to receive any remuneration
hereunder, may be assigned by either party, in whole or in part, without the
prior written consent of the other party, except that either party shall be free
to assign this Agreement in connection with any sale of substantially all of its
assets without the consent of the other. Such assignment shall be
subject to JHU approval, which approval shall not be unreasonably withheld. This
Agreement shall bind and inure to the benefit of the successors and permitted
assigns of the parties hereto.
10.9 No Waivers;
Severability. No waiver of any breach of this Agreement shall
constitute a waiver of any other breach of the same or other provision of this
Agreement, and no waiver shall be effective unless made in
writing. Any provision hereof prohibited by or unenforceable under
any applicable law of any jurisdiction shall as to such jurisdiction be deemed
ineffective and deleted herefrom without affecting any other provision of this
Agreement. It is the desire of the parties hereto that this Agreement
be enforced to the maximum extent permitted by law, and should any provision
contained herein be held by any governmental agency or court of competent
jurisdiction to be void, illegal and unenforceable, the parties shall negotiate
in good faith for a substitute term or provision which carries out the original
intent of the parties.
10.10 Entire Agreement;
Amendment. Company and JHU acknowledge that they have read
this entire Agreement and that this Agreement, including the attached Exhibits
constitutes the entire understanding and contract between the parties hereto and
supersedes any and all prior or contemporaneous oral or written communications
with respect to the subject matter hereof, all of which communications are
merged herein. It is expressly understood and agreed that (i) there
being no expectations to the contrary between the parties hereto, no usage of
trade, verbal agreement or another regular practice or method dealing within any
industry or between the parties hereto shall be used to modify, interpret,
supplement or alter in any manner the express terms of this Agreement; and (ii)
this Agreement shall not be modified, amended or in any way altered except by an
instrument in writing signed by both of the parties hereto.
Page 15
of 21
10.11 Delays or
Omissions. Except as expressly provided herein, no delay or
omission to exercise any right, power or remedy accruing to any party hereto,
shall impair any such right, power or remedy to such party nor shall it be
construed to be a waiver of any such breach or default, or an acquiescence
therein, or in any similar breach or default be deemed a waiver of any other
breach or default theretofore or thereafter occurring. Any waiver,
permit, consent or approval of any kind or character on the part of any party of
any breach or default under this Agreement, or any waiver on the part of any
party of any provisions or conditions of this Agreement, must be in writing and
shall be effective only to the extent specifically set forth in such
writing. All remedies either under this Agreement or by law or
otherwise afforded to any party, shall be cumulative and not
alternative.
10.12 Force
Majeure. If either party fails to fulfill its obligations
hereunder (other than an obligation for the payment of money), when such failure
is due to an act of God, or other circumstances beyond its reasonable control,
including but not limited to fire, flood, civil commotion, riot, war (declared
and undeclared), revolution, or embargoes, then said failure shall be excused
for the duration of such event and for such a time thereafter as is reasonable
to enable the parties to resume performance under this Agreement, provided
however, that in no event shall such time extend for a period of more than one
hundred eighty (180) days.
10.13 Further
Assurances. Each party shall, at any time, and from time to
time, prior to or after the EFFECTIVE DATE of this Agreement, at reasonable
request of the other party, execute and deliver to the other such instruments
and documents and shall take such actions as may be required to more effectively
carry out the terms of this Agreement.
10.14 Survival. All
representations, warranties, covenants and agreements made herein and which by
their express terms or by implication are to be performed after the execution
and/or termination hereof, or are prospective in nature, shall survive such
execution and/or termination, as the case may be. This shall include
Paragraphs 3.7 (Late Payments), 5.2 (Records), and Articles 6, 7, 8, 9, and
10.
10.15 No Third Party
Beneficiaries. Nothing in this Agreement shall be construed as
giving any person, firm, corporation or other entity, other than the parties
hereto and their successors and permitted assigns, any right, remedy or claim
under or in respect of this Agreement or any provision hereof.
10.16 Headings. Article
headings are for convenient reference and not a part of this
Agreement. All Exhibits are incorporated herein by this
reference.
10.17 Counterparts. This
Agreement may be executed in counterparts, each of which shall be deemed an
original and all of which when taken together shall be deemed but one
instrument.
Page 16
of 21
IN
WITNESS WHEREOF, this Agreement shall take effect as of the EFFECTIVE DATE when
it has been executed below by the duly authorized representatives of the
parties.
|
THE
▇▇▇▇▇ ▇▇▇▇▇▇▇ UNIVERSITY
|
SIGN PATH PHARMA,
INC.
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|||
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/s/ ▇▇▇ ▇▇▇▇▇▇▇▇▇
|
/s/ ▇▇. ▇▇▇▇▇ ▇▇▇▇▇▇
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|||
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▇▇▇
▇▇▇▇▇▇▇▇▇
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Name:
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▇▇.
▇▇▇▇▇ ▇▇▇▇▇▇
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||
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Director
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Title:
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CEO
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||
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▇▇▇▇▇
▇▇▇▇▇▇▇ Technology Transfer
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Sign
Path Pharma, Inc.
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|||
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10/02/07
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10/02/07
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|||
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(Date)
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(Date)
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|||
EXHIBIT
A. LICENSE FEE & ROYALITIES.
EXHIBIT
B. SALES & ROYALTY REPORT FORM.
Page 17
of 21
EXHIBIT
A
LICENSE
FEE & ROYALTIES
|
1.
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License
Fee: The license fee due
under Paragraph 3.1 is twenty five thousand US dollars ($25,000)
within thirty (30) days following license execution. An additional payment
to the tune of twenty five thousand US dollars ($25,000) should be paid
within one hundred and twenty (120) days from the date of execution of the
licensing agreement.
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|
2.
|
Minimum Annual
Royalties: The minimum annual royalties pursuant to
Paragraph 3.2 are:
|
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1st
year:
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Ten
thousand dollars ($10,000).
|
|
2nd
year:
|
Ten
thousand dollars ($10,000).
|
|
3rd
year:
|
Twenty
five thousand dollars ($25,000).
|
|
4th
year:
|
Twenty
five thousand dollars ($25,000).
|
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5th
year etc.
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Thirty
thousand dollars ($30,000).
|
|
3.
|
Royalties: The running
royalty rate payable under Paragraph 3.3 is as
follows
|
|
(1)
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Two
percent (2%) of net sales less than $250 million for licensed products
covered by one or more claims in an issued
patent;
|
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(2)
|
Three
percent (3%) of net sales equal to or greater than $250 million for
licensed products covered by one or more claims in an issued patent;
and
|
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(3)
|
One
and one half percent (1.5%) of net sales of licensed products not covered
by an issued patent.
|
If
licensee is obligated to pay running royalties to a third party to avoid
infringing such third party’s patent rights which dominate JHU patent rights (as
documented by a written opinion of an independent, qualified patent attorney, a
copy of which is provided to JHU), licensee may reduce the running royalty due
to JHU by one half of the running royalty rate being paid to such third party,
provided, however, the running royalty rate due to JHU will not be reduced to
less than one and half percent (1.5%) of net sales of licensed products covered
by an issued patent or one percent (1%) of net sales of licensed products not
covered by a claim in an issued patent.
Page 18
of 21
|
4.
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Development
Milestones:
|
|
|
a.
|
Twenty
five thousand dollars ($25,000) milestone payment will be paid upon dosing
the first patient with the licensed product in a Phase I Clinical trial at
a site other than JHU;
|
|
|
b.
|
Fifty
thousand dollars ($50,000) milestone payment will be paid upon dosing the
first patient with the licensed product in a Phase II Clinical
trial at a site other than JHU;
|
|
|
c.
|
Seventy
five thousand dollars ($75,000) milestone payment will be paid upon dosing
the first patient with the licensed product in a Phase III Clinical trial
at a site other than JHU;
|
|
|
d.
|
Two
hundred and Fifty thousand dollars ($250,000) upon the
first regulatory approval of the licensed product, provided
that, if no patent has issued at the time this milestone is achieved, the
amount of the milestone shall be reduced from Two hundred and Fifty
thousand dollars ($250,000) to One hundred thousand dollars
($100,000)
|
|
|
e.
|
Ten
thousand dollars ($10,000) upon issuance of a
patent.
|
Each of
the foregoing milestone payments shall be made by licensee to JHU (without
invoice) within thirty (30) calendar days of achieving the milestone event and
shall not reduce the amount of any other payments which are part of the term
sheet. Milestone payments shall be paid for Phase II and III clinical trials
studies conducted for the first five diseases or indications including Cancer,
Malaria, Schistosomiasis, Hemochromotosis, Neurofibromatosis and or any other
disease using the licensed technology. However there will be only one single
payment for Phase I study.
|
5.
|
Sublicense
consideration: The percent sublicense consideration
payable under Paragraph 3.5 is as
follows
|
|
|
(1)
|
Twenty
five percent (25%) of all non-royalty consideration if the sublicense is
executed before the third anniversary of the effective date of the license
agreement;
|
and
|
(2)
|
Fifteen
percent (15%) of all non-royalty consideration if the sublicense is
executed on or after the third anniversary of the effective date of the
license agreement;
|
|
6.
|
Sponsored Research: The
sponsored research funding payable under Paragraph 3.7 is as
follows
|
Licensee
shall provide funding for the completion of preclinical studies necessary to
file an IND on the licensed product containing nano curcumin, and shall provide
at least $100,000.00 in direct research funding towards such preclinical
studies. Of the $100,000 funding obligation, sponsored research payments should
be paid in three tranches as follows
|
(1)
|
$25,000
with thirty days from the date of license
execution.
|
|
(2)
|
$25,000
with one hundred and twenty days from the date of license
execution.
|
|
(3)
|
$50,000withinone
hundred and eighty days from the date of license
execution.
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Page 19
of 21
EXHIBIT
B
QUARTERLY
SALES & ROYALTY REPORT
FOR
LICENSE AGREEMENT BETWEEN SIGNPATH PHARMA AND
THE
▇▇▇▇▇ ▇▇▇▇▇▇▇ UNIVERSITY DATED
_________________________
FOR
PERIOD OF ______________ TO ______________
TOTAL
ROYALTIES DUE FOR THIS PERIOD $___________
|
PRODUCT
ID
|
PRODUCT
NAME
|
*JHU
REFERENCE
|
1st
COMMERCIAL
SALE
DATE
|
TOTAL
NET
SALES/SERVICES
|
ROYALTY
RATE
|
AMOUNT
DUE
|
* Please
provide the JHU Reference Number or Patent Reference
This
report format is to be used to report quarterly royalty statements to
JHU. It should be placed on Company letterhead and accompany any
royalty payments due for the reporting period. This report shall be
submitted even if no sales are reported.
Page 20
of 21
EXHIBIT
C
FOR
LICENSE AGREEMENT BETWEEN SIGNPATH PHARMA AND
THE
▇▇▇▇▇ ▇▇▇▇▇▇▇ UNIVERSITY DATED
|
1.
|
Assignment(s)
from Inventors to JHU.
|
Page 21
of 21