EXHIBIT 4.5
PATENT LICENSE AGREEMENT
BETWEEN THE UNIVERSITY OF TEXAS SYSTEM
AND
CYTOCLONAL PHARMACEUTICS INC.
THIS AGREEMENT is made by and between the BOARD OF REGENTS (BOARD) OF
THE UNIVERSITY OF TEXAS SYSTEM (SYSTEM), an agency of the State of Texas, whose
address is ▇▇▇ ▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇, on behalf of THE UNIVERSITY
OF TEXAS AT DALLAS (UNIVERSITY) and CYTOCLONAL PHARMACEUTICS INC., (LICENSEE), a
corporation organized and existing under the laws of the State of Texas and
having a principal place of business located at ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇▇▇.
W I T N E S E T H :
Whereas BOARD owns certain PATENT RIGHTS and TECHNOLOGY RIGHTS related
to LICENSED SUBJECT MATTER, which were developed at UNIVERSITY, a component
institution of SYSTEM, whose address is ▇.▇. ▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇
▇▇▇▇▇-▇▇▇▇, including without limitation PATENT RIGHTS and TECHNOLOGY RIGHTS
that may be developed pursuant to a Sponsored Research Agreement (SRA) between
BOARD, UNIVERSITY, and LICENSEE to be performed under the direction of ▇▇.
▇▇▇▇▇▇ ▇. ▇▇▇▇ or his/her successors and described in Article XV;
Whereas, BOARD desires to have the LICENSED SUBJECT MATTER developed
and used for the benefit of LICENSEE, the investors, BOARD, UNIVERSITY and the
public as outlined in the Intellectual Property Policy promulgated by the BOARD;
and
Whereas LICENSEE wishes to obtain a license from BOARD to practice
LICENSED SUBJECT MATTER;
NOW, THEREFORE, in consideration of the mutual covenants and premises
herein contained, the parties hereto agree as follows:
I. EFFECTIVE DATE
EFFECTIVE DATE shall mean that date of the last party to execute this
AGREEMENT, as shown on the execution page.
II. DEFINITIONS
As used in this AGREEMENT, the following terms shall have the meanings
indicated:
2.1 LICENSED SUBJECT MATTER shall mean inventions and discoveries
covered by PATENT RIGHTS or TECHNOLOGY RIGHTS within LICENSED FIELD.
2.2 PATENT RIGHTS shall mean BOARD's rights in information or
discoveries covered by (a) U.S. Patent Application Serial No. 08/320,507 filed
October 7, 1994, entitled "A Method for Ranking Sequences to Select Target
Sequence Zones of Nucleic Acids" filed October 7, 1994, naming ▇▇. ▇▇▇▇▇▇ ▇.
▇▇▇▇ as inventor (hereinafter INVENTOR), corresponding to The University of
Texas at Dallas Sponsor Number UTD-92-29; and its foreign counterparts; (b) all
divisionals, continuations, reissues, reexaminations or extensions of patent
applications of (a) above; (c) all continuations-in-part of patent applications
of (a) above, the research for which was directly supported by LICENSEE through
sponsored research and future supported research; (d) to the
extent that third parties do not have prior rights, PATENT RIGHTS shall include
LICENSEE having rights of first refusal to obtain an exclusive license
consistent with this AGREEMENT to continuation-in-part applications of patent
applications of (a) above even though not directly supported by LICENSEE through
sponsored research, said right of first refusal to be exercisable within sixty
(60) days of written notice by BOARD; (e) all letters patent that issue on such
continuation-in-part application or applications or any such divisional,
continuation, reissue, reexamination or extension thereof. Inventor named in (a)
through (e) above shall be referred to as INVENTOR.
2.3 TECHNOLOGY RIGHTS shall mean BOARD'S rights in any technical
information, know-how, process, procedure, composition, device, method, formula,
protocol, technique, software, design, drawing, data or non-patentable
invention directly relating to PATENT RIGHTS and/or LICENSED SUBJECT MATTER that
is not covered by PATENT RIGHTS but which is necessary for practicing the
invention at any time covered by PATENT RIGHTS.
2.4 LICENSED FIELD shall mean all areas of antigene, gene-targeting,
and antisense technology.
2.5 LICENSED TERRITORY shall mean worldwide.
2.6 AFFILIATE and SUBSIDIARY shall mean any business entity more than
50% owned by LICENSEE, any business entity which owns more than 50% of LICENSEE,
or any business entity that is more than 50% owned by a business entity that
owns more than 50% of LICENSEE.
2.7 COMPOSITE PRODUCTS shall mean any product SOLD by LICENSEE with
active ingredients comprising both LICENSED SUBJECT MATTER within PATENT RIGHTS
and active ingredients other than LICENSED SUBJECT MATTER.
2.8 SALE or SOLD shall mean the transfer or disposition of a LICENSED
PRODUCT for value to a party other than LICENSEE or a SUBSIDIARY.
2.9 LICENSED PRODUCT shall mean any product comprising LICENSED SUBJECT
MATTER pursuant to this AGREEMENT, including Composite Products.
2.10 NET SALES shall mean the gross revenues (whether or not in cash)
actually received by LICENSEE from the SALE of LICENSED PRODUCTS less sales,
V.A.T. and/or use taxes, duties and similar governmental assessments actually
paid, transportation, packing, shipping insurance and amounts allowed or
credited due to returns (not to exceed the original billing or invoice amount).
NET SALES also shall include user fees, wherein a user fee is payment for use of
LICENSED SUBJECT MATTER whether or not a product is sold.
III. WARRANTY; SUPERIOR-RIGHTS
3.1 Except for the rights, if any, of the Government of the United
States, as set forth hereinbelow, BOARD, represents and warrants its belief that
(a) it is the owner of the entire right, title, and interest in and to LICENSED
SUBJECT MATTER, and that it has the right to grant licenses thereunder and (b)
it has no knowledge that the practice of any PATENT RIGHTS or the manufacture,
sale or use of any LICENSED SUBJECT MATTER infringes or violates the patent or
any other intellectual property rights of any third party.
3.2 LICENSEE understands that the LICENSED SUBJECT MATTER may have been
developed under a funding agreement with the Government of the United States of
America and, if so, that the Government may have certain rights relative
thereto. This AGREEMENT is explicitly made subject to the Government's rights
under any such agreement and any applicable law or regulation. To the extent
that there is a conflict between any such
agreement, applicable law or regulation and this AGREEMENT, the terms of such
Government agreement, applicable law or regulation shall prevail. The BOARD
shall use its best efforts to obtain a waiver of all rights of the Government
with respect to the PATENT RIGHTS and the LICENSED SUBJECT MATTER.
3.3 BOARD makes no representations other than those specified in this
AGREEMENT, and specifically, MAKES NO EXPRESS OR IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
IV. LICENSE
4.1 BOARD hereby grants to LICENSEE an exclusive royalty-bearing
license under LICENSED SUBJECT MATTER to manufacture, have manufactured, use,
and/or sell LICENSED PRODUCTS within LICENSED TERRITORY for use within LICENSED
FIELD. This grant shall be subject to the payment or transfer by LICENSEE to
BOARD of all consideration as provided in this AGREEMENT, and shall be further
subject to rights retained by BOARD to:
(a) Publish the general scientific findings from research
related to LICENSED SUBJECT MATTER provided that the BOARD shall
provide LICENSEE with a right to review all such publications at least
sixty (60) days in advance of publication in order to protect any
patent or intellectual property rights; and
(b) Use LICENSED SUBJECT MATTER for research, teaching and
other educationally-related non-commercial purposes at any component
institution of the SYSTEM, provided BOARD may transfer outside the
SYSTEM for educationally-related, non-commercial purposes with the
prior written approval of LICENSEE, which shall not be unreasonably
withheld.
4.2 LICENSEE shall have the right to extend the license granted herein
to any AFFILIATE provided that such AFFILIATE consents to be bound by this
AGREEMENT to the same extent as LICENSEE.
4.3 LICENSEE shall have the right to grant sublicenses consistent with
this AGREEMENT provided that LICENSEE shall be responsible for the operations of
its sublicensees relevant to this AGREEMENT as if such operations were carried
out by LICENSEE, including the payment of royalties whether or not paid to
LICENSEE by a sublicensee. LICENSEE further agrees to deliver to BOARD a true
and correct copy of each sublicense granted by LICENSEE, and any modification,
or termination thereof, within thirty (30) days after execution, modification,
or termination. Upon termination of this AGREEMENT, any and all existing
sublicenses granted by LICENSEE shall be assigned to BOARD.
4.4 BOARD shall have the right at any time after three (3) years from
the date of this AGREEMENT, to terminate the exclusivity of the license granted
herein in any national jurisdiction within LICENSED TERRITORY if LICENSEE,
within ninety (90) days after written notice from BOARD as to such intended
termination of exclusivity, fails to provide written evidence that it has
commercialized or is actively attempting to commercialize LICENSED SUBJECT
MATTER within such jurisdiction. BOARD agrees to negotiate in good faith with
LICENSEE for adjusting terms under such a non-exclusive arrangement. BOARD shall
have the right at any time after five (5) years from the date of this AGREEMENT
to terminate the license completely in any national jurisdiction if LICENSEE,
within ninety (90) days after written notice from BOARD of such intended
termination, fails to provide written evidence that it has commercialized or is
actively attempting to commercialize LICENSED SUBJECT MATTER within such
jurisdiction. Evidence provided by LICENSEE that it has an ongoing and active
research, development, manufacturing, marketing or licensing program as
appropriate, directed toward production and sale of LICENSED SUBJECT MATTER
within such jurisdiction shall be deemed satisfactory evidence.
V. PAYMENTS AND REPORTS
5.1 Subject to the other terms of this Article V and in consideration
of rights granted by BOARD to LICENSEE under this AGREEMENT, LICENSEE agrees to
pay BOARD the following:
(a) A running royalty as provided in paragraph 5.2 in the case
of SALES by LICENSEE or its SUBSIDIARIES; and
(b) One quarter of the gross revenues or other consideration
received by LICENSEE from any sublicensee but in no event less than the
amount due pursuant to Section 5.2 if the Sublicensee's SALES were
deemed made by LICENSEE.
5.2 Subject to Section 5.3, royalty on NET SALES by LICENSEE and any
SUBSIDIARY shall be four percent (4%) of NET SALES in respect of LICENSED
PRODUCTS SOLD.
5.3 In the case of COMPOSITE PRODUCTS prior to the calculation of
royalty due thereon NET SALES shall be multiplied by a fraction whose numerator
is the cost of active ingredients within LICENSED SUBJECT MATTER and whose
denominator is the cost of all active ingredients within such COMPOSITE PRODUCT.
The resulting number shall represent the NET SALES price basis for calculation
of royalties due on COMPOSITE PRODUCTS.
5.4 Upon the request of BOARD but not more than once per calendar year,
LICENSEE shall deliver to BOARD a written report as to LICENSEE'S efforts and
accomplishments during the preceding year in commercializing LICENSED SUBJECT
MATTER in various parts of the LICENSED TERRITORY and its commercialization
plans for the upcoming year.
5.5 During the term of this AGREEMENT, and for one (1) year thereafter
LICENSEE shall keep complete and accurate records of its NET SALES and (as
reported to it) its sublicensee's NET SALES of LICENSED PRODUCTS and COMPOSITE
PRODUCTS under the license granted in this AGREEMENT in sufficient detail to
enable the royalties payable hereunder to be determined. LICENSEE shall permit
an independent certified public accountant (hired by the BOARD and reasonably
acceptable to LICENSEE), at BOARD'S expense, to periodically examine its books,
ledgers, and records during regular business hours for the purpose of and to the
extent necessary to verify any report required under this AGREEMENT; provided
such accountant is bound in confidence and may not disclose any such information
except to BOARD as necessary to show underpayment. In the event that the amounts
due to BOARD have been underpaid, LICENSEE shall pay the cost of such
examination, the due amount, and accrued interest thereon at the prevailing
prime rate for commercial loans.
5.6 Within forty-five (45) days after March 31, June 30, September 30
and December 31, LICENSEE shall deliver to BOARD at the addresses listed in
section 16.2 a true and accurate report, giving such particulars of the business
conducted by LICENSEE during the preceding calendar quarter under this AGREEMENT
as are pertinent to an account for payments hereunder. Such report shall include
at least (a) the quantifies of LICENSED SUBJECT MATTER that it has SOLD; (b) the
total SALES; (c) the calculation of royalties thereon; and (d) the total
royalties so computed due BOARD. Simultaneously with the delivery of each such
report LICENSEE shall pay to BOARD the amount, if any, due for the period of
such report. If no payments are due, it shall be so reported. LICENSEE shall
impose on sublicensees similar reporting and payment obligations and shall
provide BOARD similar reports from sublicensees as they relate to BOARD'S
entitlements under section 5.1(b) to the extent received during such quarter or
thereafter up until fifteen (15) business days prior to the due date for the
report on LICENSEE'S SALES. Simultaneously with
its report on such sublicensee activity, LICENSEE shall pay to BOARD amounts due
under section 5.1(b).
5.7 All amounts payable hereunder by LICENSEE shall be payable in
United States funds without deductions for taxes, assessments, fees, or
charges of any kind. Checks for amounts due to BOARD shall be made payable to
The University of Texas at Dallas and mailed to: Office of Sponsored
Projects, The University of Texas at Dallas, ▇.▇. ▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇, ▇▇▇▇▇-▇▇▇▇, Attention: ▇▇. ▇▇▇▇▇▇▇▇ ▇▇▇▇▇.
VI. TERM AND TERMINATION
6.1 The Term of this AGREEMENT shall extend from the Effective Date set
forth hereinabove to the full end of the term or terms for which PATENT RIGHTS
have not expired and if only TECHNOLOGY RIGHTS are licensed and no PATENT RIGHTS
are applicable, for a term of twenty (20) years.
6.2 This AGREEMENT will earlier terminate:
(a) automatically if any payment obligation of LICENSEE in
Section V of the present Agreement is not received by BOARD within
thirty (30) days after LICENSEE receives written notice of its failure
to make such payment. In this circumstance, LICENSEE may petition BOARD
for reinstatement of this AGREEMENT within ninety (90) days after this
thirty (30) day period has elapsed. Reinstatement of this AGREEMENT
shall be at the discretion of BOARD and contingent upon payment of all
past due payments and accrued interest at the prime rate plus two
percent (2%), unless such interest is greater than the highest
allowable rate by law in which the interest shall be the highest
allowable rate by law; or
(b) upon ninety (90) days written notice if LICENSEE or BOARD
shall breach or default on any obligation under this License AGREEMENT;
provided, however, LICENSEE or BOARD may avoid such termination if
before the end of such period LICENSEE or BOARD notifies the other
party that such breach has been cured and states the manner of such
cure, and in fact the breach has been cured; or
(c) Under the provisions of Paragraph 4.4 if invoked; or
(d) Upon sixty (60) days written notice by LICENSEE.
6.3 Upon termination of this AGREEMENT for any cause, nothing herein
shall be construed to release either party of any obligation matured prior to
the effective date of such termination. LICENSEE may, after the effective date
of such termination, sell all LICENSED PRODUCT and parts therefor that it may
have on hand at the date of termination provided that it makes all payments to
BOARD required by this AGREEMENT.
VII. INFRINGEMENT BY THIRD PARTIES
7.1 LICENSEE shall have the obligation of enforcing at its expense any
patent exclusively licensed hereunder against infringement by third parties. In
the event that LICENSEE is awarded a recovery from an infringer or
misappropriating party in excess of the reasonable costs and expenses for
bringing such infringement or misappropriation action, LICENSEE shall pay to
BOARD twenty-five percent (25%) of any such excess recovery. In the event that
LICENSEE does not file suit against a substantial infringer of such patents
within six (6) months of receipt of a written demand from BOARD to bring suit,
BOARD and LICENSEE will consult with one another in an effort to determine
whether a reasonably prudent licensee would institute litigation to enforce the
patent in question in light of all relevant business and economic
factors (including, but not limited to, the projected costs of such litigation,
the likelihood of success on the merits, the probable amount of any damage
award, the prospects for satisfaction of any judgment against the alleged
infringer, the possibility of counterclaims against LICENSEE and BOARD, the
diversion of LICENSEE'S human and economic resources, the impact of any possible
adverse outcome on LICENSEE'S and BOARD'S respective reputations and goodwill).
After such consultation, if BOARD and LICENSEE have not reached agreement and
LICENSEE does not file suit forthwith against the substantial infringer, then
BOARD shall have the right to convert the previously licensed exclusive rights
to non-exclusive provided that a reasonably prudent licensee would have brought
such suit in light of the above-mentioned circumstances.
7.2 In any suit or dispute involving an infringer, the parties
shall cooperate fully, and upon the request and at the expense of the party
bringing suit, the other party shall make available to the party bringing suit
at reasonable times and under appropriate conditions all relevant personnel,
records, papers, information, samples, specimens, and the like which are in its
possession.
VIII. ASSIGNMENT
This AGREEMENT may not be assigned by LICENSEE without the
prior written consent of BOARD, which consent will not be unreasonably denied or
withheld.
XI. PATENT MARKING
LICENSEE agrees to ▇▇▇▇ permanently and legibly all products
and documentation manufactured or sold by it under this AGREEMENT with such
patent notice as may be permitted or required under ▇▇▇▇▇ ▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇
Code.
X. INDEMNIFICATION
LICENSEE shall hold harmless and indemnify BOARD, SYSTEM,
UNIVERSITY, its Regents, officers, employees and agents (hereinafter referred to
collectively as "INDEMNITEES") from and against any claims, demands, or causes
of action whatsoever (hereinafter collectively referred to as "CLAIMS"),
including without limitation those arising on account of any injury or death of
persons or damage to property caused by, or arising out of or resulting from,
the exercise or practice of the license granted hereunder by LICENSEE or its
officers, employees, agents or representatives except to the extent that any
such CLAIM arises out of the result of the negligence or misconduct of the
INDEMNITEES.
XI. USE OF NAME
LICENSEE shall not use the name of UNIVERSITY, SYSTEM, BOARD,
INVENTORS, Regents or employees without express prior written consent.
XII. CONFIDENTIAL INFORMATION
12.1 BOARD and LICENSEE each agree that all trade secrets
and/or information contained in documents or otherwise disclosed (i.e. oral)
which are forwarded to one by the other shall be received in strict confidence,
used only for the purposes of this AGREEMENT, and not disclosed by the recipient
party (except as required by law or court order), its agents or employees
without the prior written consent of the other party, unless such information
(a) was in the public domain at the time of disclosure; (b) later became part of
the public domain through no act or omission of the recipient party, its
employees, agents, successors or assigns; (c) was lawfully disclosed to the
recipient party by third party having the right to disclose it; (d) was
already known by the recipient party at the time of disclosure, the burden of
proof being upon the recipient party; (e) was independently developed; or (f) is
required to be submitted to a government agency pursuant to any preexisting
obligation.
12.2 Each party's obligation of confidence hereunder shall be
fulfilled by using at least the same degree of care with the other party's
confidential information it uses to protect its own confidential information.
This obligation shall exist while this AGREEMENT is in force and for a period of
three (3) years thereafter.
XIII. PATENTS AND INVENTIONS
13.1 LICENSEE shall reimburse UNIVERSITY for all past,
present, and future expenses incurred in searching, preparing, filing,
prosecuting and maintaining patent applications and patents relating to PATENT
RIGHTS. If after consultation with LICENSEE it is agreed by UNIVERSITY, as
appropriate, and LICENSEE concurs that another patent application should be
filed for LICENSED SUBJECT MATTER, UNIVERSITY, as appropriate, will prepare and
file appropriate patent applications, and LICENSEE shall pay or promptly
reimburse UNIVERSITY for the cost of searching, preparing, filing, prosecuting
and maintaining same. If LICENSEE notified UNIVERSITY, as appropriate, that it
does not intend to pay such costs, or if LICENSEE does not respond or make an
effort to reach agreement, then UNIVERSITY, as appropriate, may file such
application at its own expense and LICENSEE shall have no rights to such
invention under this AGREEMENT or otherwise. UNIVERSITY, as appropriate, shall
provide LICENSEE with a copy of the application filed for which LICENSEE has
paid the cost of filing, as well as copies of any documents received or filed
during prosecution thereof.
13.2 After consultation with BOARD, LICENSEE, at its sole
expense, may prepare and file appropriate foreign patent applications to be
owned by BOARD on LICENSED SUBJECT MATTER, or any portion thereof, subject to
BOARD'S approval of the content of the application(s) and any amendments
thereto. In addition, LICENSEE agrees to:
(a) Notify BOARD and UNIVERSITY of its intent to file
for patent(s) related to LICENSED SUBJECT MATTER at least thirty (30) days prior
to applying for patent(s);
(b) Inform BOARD and UNIVERSITY of LICENSEE'S choice
of patent counsel to prepare and prosecute said patent application(s). Final
approval of patent counsel shall rest with BOARD, whose approval shall not be
unreasonably withheld;
(c) Subject to BOARD approval, prepare, file and
prosecute appropriate patent application(s) on the invention(s) and bear all
such costs;
(d) Assign such patent application(s) to BOARD; and
(e) Provide BOARD and UNIVERSITY with a copy (or
copies) of all patent applications, as well as copies of any documents received
or filed during prosecution thereof. LICENSEE will provide BOARD with the
opportunity to review, approve and comment thereon.
XIV. CONSULTATION
14.1 LICENSEE'S DESIGNATED REPRESENTATIVE (hereinafter so
called) for consultation and communications with INVENTORS shall be ▇▇. ▇▇▇▇▇▇
▇. ▇▇▇▇▇▇ or such other person as LICENSEE may from time to time designate in
writing to UNIVERSITY.
14.2 Individual INVENTORS may act as consultants and advisors
to LICENSEE on matters pertaining to transfer of LICENSED SUBJECT MATTER to
LICENSEE under this AGREEMENT pursuant to UNIVERSITY'S normal rules and policies
relating to consulting. Such consultation shall be carried out at times,
locations and in a manner mutually agreed upon by individual INVENTORS
and LICENSEE'S DESIGNATED REPRESENTATIVE. For such services, LICENSEE will enter
into payment arrangements with each INVENTOR, such payments to be made in cash,
subject to approval by UNIVERSITY, as appropriate, in accordance with internal
rules, regulations and procedures, which approval will not be unreasonably
withheld.
14.3 Any invention conceived and reduced to practice by
INVENTORS during such consultation shall be the property of BOARD and shall fall
within the option rights below.
14.4 Any invention conceived and reduced to practice jointly
by LICENSEE'S employees or agents and INVENTORS shall be jointly owned by
LICENSEE and BOARD and shall, respectively, fall within the option rights
described below.
14.5 BOARD grants to LICENSEE an option to negotiate a
worldwide, exclusive license to practice and use any and all inventions and
know-how which fall under these option rights as described in Section 14.3 and
14.4. Such option shall be exercisable at any time by LICENSEE within one
hundred- twenty (120) days after UNIVERSITY, as appropriate, notifies LICENSEE
in writing of such invention. LICENSEE must exercise its option in writing
according to the provisions in Section 16.2, identify the invention and/or
know-how, and provide a written statement of its intention to develop the
invention and/or know-how for public use as soon as practicable, consistent with
sound and reasonable business practices and judgment. Upon exercise of each such
option, BOARD and LICENSEE shall enter into negotiations of a license agreement
based on the foregoing rights, which agreement shall include at least the
following terms and conditions or terms and conditions similar to those set
forth in this AGREEMENT:
(a) a commitment by LICENSEE to pay to BOARD a
reasonable amount of equity and/or running royalty on net sales;
(b) a commitment by LICENSEE to diligently develop
and commercialize the licensed invention and know-how. In the event LICENSEE
does not achieve its commitment, its license shall terminate upon written notice
by BOARD;
(c) a term that does not exceed any limits imposed by
law;
(d) retention by BOARD of the complete royalty-free
right to make and use any invention and know-how for teaching, research, or
other educationally-related or academically-related purposes based on terms in
4.1(a) and 4.1(b);
(e) reservation of the rights of the government of
the United States of America, as set forth in Public Law 96-517, if applicable;
and
(f) an indemnification by LICENSEE of UNIVERSITY
(including BOARD and SYSTEM) and their regents, officers, employees, and agents
from all liability arising from LICENSEE'S development, marketing,
manufacturing, use or sale of any invention or know-how.
14.6 In the event that an invention is conceived or reduced to
practice during the consultation set out herein, UNIVERSITY, as appropriate,
agrees to report such invention to LICENSEE within sixty (60) days of the
identification of such invention. BOARD and LICENSEE shall thereupon exert their
best efforts in cooperation with each other to investigate, evaluate and
determine to the mutual satisfaction of both BOARD and LICENSEE whether any
patent application(s) are to be filed.
14.7 Both parties agree to negotiate in good faith to enter
into a license agreement as soon as reasonably practicable after the exercise of
such option.
14.8 If after discussion on any invention of which UNIVERSITY
employee is sole or joint inventor, it is agreed by BOARD and LICENSEE that a
patent application(s) should be filed, BOARD and LICENSEE will cooperate with
each other in determining whether BOARD or LICENSEE should prepare, file, and
prosecute patent application(s). If BOARD prepares, files and prosecutes patent
application(s) on the invention, LICENSEE shall reimburse BOARD for such costs
of such preparation, filing, prosecution and maintenance thereof. If LICENSEE
notifies BOARD that it does not intend to pay such costs, or if LICENSEE does
not respond within thirty (30) days of written notice from BOARD, then BOARD may
file such application(s) at its own expense and LICENSEE shall have no rights,
option or otherwise to such invention. BOARD shall provide LICENSEE with a copy
of any application(s) filed for which LICENSEE has paid such costs, as well as
copies of any documents received or filed during prosecution thereof.
XV. SPONSORED RESEARCH
LICENSEE and BOARD agree to begin diligently negotiating a
Sponsored Research Agreement within ninety (90) days of the EFFECTIVE DATE of
this AGREEMENT with the intent of concluding negotiations within six (6) months
following the EFFECTIVE DATE of this AGREEMENT.
XVI. GENERAL
16.1 This AGREEMENT constitutes the entire and only agreement
between the parties for LICENSED SUBJECT MATTER and all other prior
negotiations, representations, agreements, and understandings are superseded
hereby. No agreements altering or supplementing the terms hereof may be made
except by means of a written document signed by the duly authorized
representatives of the parties.
16.2 Any notice required by this License AGREEMENT shall be
given by prepaid, first class, certified mail, return receipt requested,
addressed in the case of BOARD TO:
BOARD OF REGENTS
The University of Texas System
▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: Intellectual Property Section
Office of General Counsel
with a copy to:
University of Texas at Dallas
▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇, Ph.D.
Office of Sponsored Projects
▇.▇. ▇▇▇ ▇▇▇▇▇▇, ▇/▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
and
▇▇. ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
Vice President for Business Affairs
University of Texas at Dallas
▇.▇. ▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
or such other address as may be given from time to time under the terms of this
notice provision.
16.3 LICENSEE shall comply with all applicable federal, state
and local laws, regulations, and ordinances in connection with its activities
pursuant to this AGREEMENT.
16.4 This License AGREEMENT shall be governed by and construed
and enforced in accordance with the laws of the United States of America and the
State of Texas.
16.5 Failure of the BOARD to enforce a right under this
AGREEMENT shall not act as a waiver of that right or the ability to later assert
that right relative to the particular situation involved.
16.6 Headings included herein are for convenience only and not
be used to construe this AGREEMENT.
16.7 If any provision of this AGREEMENT shall be found by a
court to be void, invalid, or unenforceable, the same shall be reformed to
comply with applicable law or stricken if not so conformable, so as not to
affect the validity or enforceability of this AGREEMENT.
IN WITNESS WHEREOF, parties hereto have caused their duly
authorized representatives to execute this AGREEMENT.
BOARD OF REGENTS OF THE CYTOCLONAL PHARMACEUTICS, INC.
UNIVERSITY OF TEXAS
/s/ ▇▇▇ ▇▇▇▇▇▇▇ /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
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Vice Chancellor and Counsel Chief Executive Officer
Date: 6/10/96 Date: 5-28-96
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APPROVED AS TO FORM: APPROVED AS TO CONTENT:
By: /▇▇▇▇▇▇ ▇. ▇▇▇▇▇ ▇▇. By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
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Office of General Counsel Vice President for Business
Affairs
Date: 6/10/96 Date: _________________________
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