EVALUATION LICENSE AGREEMENT BETWEEN NEOPROBE, INC. AND THE REGENTS OF THE UNIVERSITY OF CALIFORNIA FOR CASE NO. SD98-088
EXHIBIT
10.12
EVALUATION
LICENSE
AGREEMENT
BETWEEN
NEOPROBE,
INC.
AND
THE
REGENTS OF THE UNIVERSITY OF CALIFORNIA
FOR
CASE
NO. SD98-088
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Definitions
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1
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Grant
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3
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Consideration
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4
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Reports,
Records and Payments
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5
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Patent
Matters
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6
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Governmental
Matters
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7
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Termination
of Agreement
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7
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Limited
Warranty and Indemnification
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8
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Use
of Names and Trademarks
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10
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Miscellaneous
Provisions
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10
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This
agreement ("Agreement") is made by and
between Neoprobe Corporation,
a Delaware corporation having an address at ▇▇▇
▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
("LICENSEE") and The Regents of
the
University of
California, a California corporation having its statewide administrative offices
at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇ ("UNIVERSITY"),
represented by its San Diego campus having an address at University of
California, San Diego, Technology Transfer & Intellectual Property Services,
Mail
Code
0910,
▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇ ("UCSD").
This
Agreement is effective on March
31, 2005
("Effective Date").
WHEREAS,
the
inventions disclosed in UCSD Disclosure Docket No. SD1998-088 and titled
“MACROMOLECULAR
CARRIER FOR DRUG AND DIAGNOSTIC AGENT DELIVERY“
("Invention"), were made in the course of research at UCSD by ▇▇. ▇▇▇▇▇ ▇▇▇▇
(hereinafter, the "Inventor") and are covered by Patent Rights as defined
below;
WHEREAS,
the
research was sponsored in part by the Government of the United States of America
and as a consequence this license is subject to overriding obligations to the
Federal Government under 35 U.S.C. §§ 200-212 and applicable
regulations;
WHEREAS,
the
Inventors are employees of UCSD, and they are obligated to assign all of their
right, title and interest in the Invention to UNIVERSITY;
WHEREAS,
UNIVERSITY is desirous that the Invention be developed and utilized to the
fullest possible extent so that its benefits can be enjoyed by the general
public;
WHEREAS,
LICENSEE is desirous of obtaining certain rights from UNIVERSITY for commercial
development, use, and sale of the Invention, and the UNIVERSITY is willing
to
grant such rights; and
WHEREAS,
LICENSEE understands that UNIVERSITY may publish or otherwise disseminate
information concerning the Invention at any time and that LICENSEE is paying
consideration thereunder for its early access to the Invention, not continued
secrecy therein.
NOW,
THEREFORE,
the
parties agree:
The
terms, as defined herein, shall have the same meanings in both their singular
and plural forms.
| 1.1 |
[reserved].
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| 1.2 |
"Sublicense"
means an agreement into which LICENSEE enters with a third party
that is
not an Affiliate for the purpose of (i) granting certain rights;
(ii)
granting an option to certain rights; or (iii) forbearing the exercise
of
any rights, granted to LICENSEE under this Agreement. "Sublicensee"
means
a third party with whom LICENSEE enters into a
Sublicense.
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| 1.3 |
"Field"
means diagnostic
use in ultrasound and optical imaging (and specifically excluding
magnetic
resonance imaging) which is a labeled-carbohydrate-conjugated
macromolecule that directs a label to lymphoid
tissue.
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| 1.4 |
"Territory"
means United States, the European Union and
Japan.
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| 1.5 |
"Term"
means the period of time beginning on the Effective Date and ending
on the
second (2nd) anniversary of Effective
Date.
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| 1.6 |
"Patent
Rights" means any
of the following: the US patent (serial number 6,409,990, titled
"MACROMOLECULAR CARRIER FOR DRUG AND DIAGNOSTIC AGENT DELIVERY")
disclosing and claiming the Invention, filed by Inventor and assigned
to
UNIVERSITY; and continuing applications thereof including divisions,
substitutions, and continuations-in-part (but only to extent the
claims
thereof are enabled by disclosure of the parent application); any
patents
issuing on said applications including reissues, reexaminations and
extensions; and any corresponding foreign applications or
patents..
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| 1.7 |
[reserved].
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| 1.8 |
"Sponsor
Rights" means all the applicable provisions of any license to the
United
States Government executed by UNIVERSITY and the overriding obligations
to
the Federal Government under 35 U.S.C. §§ 200-212 and applicable
governmental implementing
regulations.
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| 1.9 |
"Licensed
Method" means any method that is covered by Patent Rights,
the use of which would constitute, but for the license granted to
LICENSEE
under this Agreement, an infringement, an inducement to infringe
or
contributory infringement, of any pending or issued claim within
Patent
Rights.
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| 1.10 |
"Licensed
Product" means any service, composition or product that is covered
by the
claims of Patent Rights, or that is produced by the Licensed Method,
or
the manufacture, use, sale, offer for sale, or importation of which
would
constitute, but for the license granted to LICENSEE under this Agreement,
an infringement, an inducement to infringe or contributory infringement,
of any pending or issued claim within the Patent
Rights.
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| 1.11 |
[reserved]
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1.12
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“Patent
Costs” means all pro-rata out-of-pocket
expenses for the preparation, filing, prosecution, and
maintenance
of all United States and foreign patents included in Patent Rights.
Patent
Costs shall also include reasonable out-of-pocket expenses for
patentability opinions, inventorship determination, preparation and
prosecution of patent application, re-examination, re-issue, interference,
opposition activities related to patents or applications in Patent
Rights
and a 15% patent service fee.
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2.1 License.
Subject
to the limitations set forth in this Agreement
and Sponsor's Rights, UNIVERSITY hereby grants to LICENSEE, and LICENSEE hereby
accepts, a limited license under Patent Rights to make and use Licensed
Products
and to
practice Licensed Methods,
in the
Field within the Territory and during the Term for the sole purpose of
evaluating LICENSEE'S interest in negotiating a commercial license under Patent
Rights. The sale of Licensed Products or Licensed Methods is strictly
prohibited.
The
limited license granted herein is exclusive for Patent Rights in the
Field.
2.2
Sublicense.
(a)
The
limited license granted in Paragraph 2.1 includes the right of LICENSEE to
grant
limited Sublicenses to third parties during the Term but only for as long the
license is exclusive.
(b)
With
respect to Sublicense granted pursuant to Paragraph 2.2(a), LICENSEE
shall:
(i)
not
receive, or agree to receive, anything of value in lieu of cash as consideration
from a third party under a Sublicense granted pursuant to Paragraph 2.2(a)
without the express written consent of UNIVERSITY;
(ii)
to
the extent applicable, include all of the rights of and obligations due to
UNIVERSITY (and, if applicable, the Sponsor's Rights) and contained in this
Agreement;
(iii)
promptly provide UNIVERSITY with a copy of each Sublicense issued;
and
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Portions
have been omitted and filed separately with the Securities and
Exchange
Commission pursuant to a request for confidential
treatment.
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(iv)
collect and guarantee payment of all payments due, directly or indirectly,
to
UNIVERSITY from Sublicensees and summarize and deliver all reports due, directly
or indirectly, to UNIVERSITY from Sublicensees.
(c)
Upon
termination of this Agreement for any reason, UNIVERSITY, at its sole
discretion, shall determine whether LICENSEE shall cancel or assign to
UNIVERSITY any and all Sublicenses.
2.3
Reservation
of Rights.
UNIVERSITY reserves the right to:
(a)
use
the Invention and Patent Rights for educational and research
purposes;
(b)
publish or otherwise disseminate any information about the Invention at any
time; and
(c)
allow
other nonprofit institutions to use Invention and Patent Rights for educational
and research purposes.
3.1
Fees.
The
parties hereto understand that the fees payable by LICENSEE to UNIVERSITY under
this Agreement are partial consideration for the license granted herein to
LICENSEE under Patent Rights. LICENSEE shall pay UNIVERSITY:
(a)
an
evaluation
license fee
of
Thirty-Six Thousand Dollars
(US$36,000),
within
thirty (30) days after the Effective Date;
(b)
evaluation
license maintenance fees
of Nine
Thousand Dollars (US$9,000) payable on the first year anniversary of the
Effective Date, Nine Thousand Dollars (US$9,000) payable on the eighteen-month
anniversary of the Effective Date, and Eighteen Thousand Dollars (US$18,000)
payable prior to termination;
(c) [*]%
of
all Sublicense
fees
received
by LICENSEE from its Sublicensees received by LICENSEE;
All
fees
payments specified in Paragraphs 3.1(a) through 3.1(c) above shall be paid
by
LICENSEE pursuant to Paragraph 4.3 and shall be delivered by LICENSEE to
UNIVERSITY as noted in Paragraph 10.1.
3.2
Patent
Costs.
LICENSEE
shall reimburse UNIVERSITY all future (on or after the Effective Date) Patent
Costs incurred in the Territory within thirty (30) days following the date
an
itemized invoice is sent from UNIVERSITY to LICENSEE.
3.3
Due
Diligence.
(a)
LICENSEE shall:
(i)
provide UNIVERSITY progress reports on its evaluation of the Licensed Products
as specified in 4.1.
(b)
If
LICENSEE fails to perform any of its obligations specified in Paragraphs 3.3(a),
then UNIVERSITY shall have the right and option to either terminate this
Agreement or change LICENSEE's exclusive license to a nonexclusive license.
This
right, if exercised by UNIVERSITY, supersedes the rights granted in Article
2.
4.1
Reports.
(a)
Progress
Reports.
(i)
Beginning
six months after Effective Date, LICENSEE shall report to UNIVERSITY progress
covering LICENSEE's and Sublicensee’s activities for the preceding
six
months to develop and test all Licensed Products. Such semi-annual reports
shall
be due within sixty days of the reporting period and include a summary of work
completed, summary of work in progress, current schedule of anticipated events
or milestones, plans for introduction of Licensed Products, and summary of
resources (dollar value) spent in the reporting period.
4.2
[reserved]
4.3
Payments.
(a)
All
fees and reimbursements due UNIVERSITY shall be paid in United States dollars
and all checks shall be made payable to "The Regents of the University of
California", referencing UNIVERSITY's taxpayer identification number,
▇▇-▇▇▇▇▇▇▇, and sent to UNIVERSITY according to Paragraph 10.1
(Correspondence).
(b)
In
the event that any patent or patent claim within Patent Rights is held invalid
in a final decision by a patent office from which no appeal or additional patent
prosecution has been or can be taken, or by a court of competent jurisdiction
and last resort and from which no appeal has or can be taken, all obligation
to
pay fees based solely on that patent or claim or any claim patentably indistinct
therefrom shall cease as of the date of such final decision. LICENSEE shall
not,
however, be relieved from paying any fees that accrued before the date of such
final decision, that are based on another patent or claim not involved in such
final decision.
(c)
Late
Payments. In the event reimbursement and/or fee payments are not received by
UNIVERSITY when due, LICENSEE shall pay to UNIVERSITY interest charges at a
rate
of ten percent (10%) per year. Such interest shall be calculated from the date
payment was due until actually received by UNIVERSITY.
5.1
Patent
Prosecution and Maintenance.
(a)
Provided that LICENSEE has reimbursed UNIVERSITY for Patent Costs pursuant
to
Paragraph 3.2, UNIVERSITY shall diligently prosecute and maintain the United
States and, if available, foreign patents, and applications in Patent Rights
using counsel of its choice. UNIVERSITY shall provide LICENSEE with copies
of
all relevant documentation relating to such prosecution and LICENSEE shall
keep
this documentation confidential. The counsel shall take instructions only from
UNIVERSITY, and all patents and patent applications in Patent Rights shall
be
assigned solely to UNIVERSITY.
(b)
UNIVERSITY shall consider amending any patent application in Patent Rights
to
include claims reasonably requested by LICENSEE to protect the products
contemplated to be sold by LICENSEE under this Agreement.
(c) LICENSEE
may elect to terminate its reimbursement obligations with respect to any patent
application or patent in Patent Rights upon three (3) months' written notice
to
UNIVERSITY. UNIVERSITY shall use reasonable efforts to curtail further Patent
Costs for such application or patent when such notice of termination is received
from LICENSEE. UNIVERSITY, in its sole discretion and at its sole expense,
may
continue prosecution and maintenance of said application or patent, and LICENSEE
shall have no further license with respect thereto. Non-payment of any portion
of Patent Costs with respect to any application or patent may be deemed by
UNIVERSITY as an election by LICENSEE to terminate its reimbursement obligations
with respect to such application or patent. The University is not obligated
to
file, prosecute, or maintain Patent Rights outside of the territory at any
time
or to file, prosecute, or maintain Patent Rights to which Licensee has
terminated its License hereunder.
(d) LICENSEE
shall apply for an extension of the term of any patent in Patent Rights if
appropriate under the Drug Price Competition and Patent Term Restoration Act
of
1984 and/or European, Japanese and other foreign counterparts of this law.
LICENSEE shall prepare all documents for such application, and UNIVERSITY shall
execute such documents and to take any other additional action as LICENSEE
reasonably requests in connection therewith.
5.2
Patent
Marking.
LICENSEE
shall ▇▇▇▇ all Licensed Products made or used under the terms of this Agreement,
or their containers, in accordance with the applicable patent marking
laws.
6.1
Governmental
Approval or Registration.
If this
Agreement or any associated transaction is required by the law of any nation
to
be either approved or registered with any governmental agency, LICENSEE shall
assume all legal obligations to do so. LICENSEE shall notify UNIVERSITY if
it
becomes aware that this Agreement is subject to a United States or foreign
government reporting or approval requirement. LICENSEE shall make all necessary
filings and pay all costs including fees, penalties, and all other out-of-pocket
costs associated with such reporting or approval process.
6.2
Export
Control Laws.
LICENSEE
shall observe all applicable United States and foreign laws with respect to
the
transfer of Licensed Products and related technical data to foreign countries,
including, without limitation, the International Traffic in Arms Regulations
and
the Export Administration Regulations.
7.1
Termination
by UNIVERSITY.
If
LICENSEE fails to perform or violates any term of this Agreement, then
UNIVERSITY may give written notice of default ("Notice of Default") to LICENSEE.
If LICENSEE fails to cure the default within sixty (60) days of the Notice
of
Default, UNIVERSITY may terminate this Agreement and the license granted herein
by a second written notice ("Notice of Termination") to LICENSEE. If a Notice
of
Termination is sent to LICENSEE, this Agreement shall automatically terminate
on
the effective date of that notice. Termination shall not relieve LICENSEE of
its
obligation to pay any fees owed at the time of termination and shall not impair
any accrued right of UNIVERSITY.
7.2
Termination
by LICENSEE.
(a)
LICENSEE shall have the right at any time and for any reason to terminate this
Agreement upon a ninety (90)-day written notice to UNIVERSITY. Said notice
shall
state LICENSEE’s reason for terminating this Agreement.
(b)
Any
termination under Paragraph 7.2(a) shall not relieve LICENSEE of any obligation
or liability accrued under this Agreement prior to termination or rescind any
payment made to UNIVERSITY or action by LICENSEE prior to the time termination
becomes effective. Termination shall not affect in any manner any rights of
UNIVERSITY arising under this Agreement prior to termination.
7.3
Survival
on Termination.
The
following Paragraphs and Articles shall survive the termination of this
Agreement:
(a) Article
4
(REPORTS, RECORDS AND PAYMENTS);
(b)
Paragraph
7.4 (Disposition of Licensed Products on Hand);
(c) Paragraph
8.2 (Indemnification);
(d) Article
9
(USE OF NAMES AND TRADEMARKS);
(e) Paragraph
10.2 hereof (Secrecy); and
(f) Paragraph
10.5 (Failure to Perform).
7.4
Disposition
of Licensed Products on Hand.
Upon
termination of this Agreement, LICENSEE may dispose of all previously made
or
partially made Licensed Product within a period of one hundred and twenty (120)
days of the effective date of such termination provided that the use of such
Licensed Product by LICENSEE shall be subject to the terms of this Agreement,
including but not limited to the rendering of reports required under this
Agreement.
8.1
Limited
Warranty.
(a) UNIVERSITY
warrants that it has the lawful right to grant this license.
(b) The
license granted herein is
provided “AS IS” and without WARRANTY OF MERCHANTABILITY or WARRANTY OF FITNESS
FOR A PARTICULAR PURPOSE or any other warranty, express or implied. UNIVERSITY
makes no representation or warranty that the Licensed Product, Licensed Method
or the use of Patent Rights will not infringe any other patent or other
proprietary rights.
(c) In
no
event shall UNIVERSITY be liable for any incidental, special or consequential
damages resulting from exercise of the license granted herein or the use of
the
Invention, Licensed Product, Licensed Method.
(d) Nothing
in this Agreement shall be construed as:
(i) a
warranty or representation by UNIVERSITY as to the validity or scope of any
Patent Rights;
(ii) a
warranty or representation that anything made, used, sold or otherwise disposed
of under any license granted in this Agreement is or shall be free from
infringement of patents of third parties;
(iii) an
obligation to bring or prosecute actions or suits against third parties for
patent infringement except as provided in Paragraph 5.2 hereof;
(iv) conferring
by implication, estoppel or otherwise any license or rights under any patents
of
UNIVERSITY other than Patent Rights as defined in this Agreement,
regardless of whether those patents are dominant or subordinate to Patent
Rights; or
(v) an
obligation to furnish any know-how not provided in Patent Rights.
8.2
Indemnification.
(a) LICENSEE
shall indemnify, hold harmless and defend UNIVERSITY, its officers, employees,
and agents; the sponsors of the research that led to the Invention; and the
Inventors of the patents and patent applications in Patent Rights and their
employers against any and all claims, suits, losses, damage, costs, fees, and
expenses resulting from or arising out of exercise of this license or any
Sublicense. This indemnification shall include, but not be limited to, any
product liability.
(b) LICENSEE,
at its sole cost and expense, shall insure its activities in connection with
the
work under this Agreement and obtain, keep in force and maintain insurance
or an
equivalent program of self insurance as follows:
(i) comprehensive
or commercial general liability insurance (contractual liability included)
with
limits of at least: (A) each occurrence, one million dollars (US$1,000,000);
(B)
products/completed operations aggregate, five million dollars (US$5,000,000);
(C) personal and advertising injury,one million dollars (US$1,000,000); and
(D)
general aggregate (commercial form only), five million dollars (US$5,000,000);
and
(ii) the
coverage and limits referred to above shall not in any way limit the liability
of LICENSEE.
(c) LICENSEE
shall furnish UNIVERSITY with certificates of insurance showing compliance
with
all requirements. Such certificates shall: (i) provide for thirty (30) day
advance written notice to UNIVERSITY of any modification; (ii) indicate that
UNIVERSITY has been endorsed as an additionally insured party under the coverage
referred to above; and (iii) include a provision that the coverage shall be
primary and shall not participate with nor shall be excess over any valid and
collectable insurance or program of self-insurance carried or maintained by
UNIVERSITY.
(d) UNIVERSITY
shall notify LICENSEE in writing of any claim or suit brought against UNIVERSITY
in respect of which UNIVERSITY intends to invoke the provisions of this Article.
LICENSEE shall keep UNIVERSITY informed on a current basis of its defense of
any
claims under this Article.
9.1 Nothing
contained in this Agreement confers any right to use in advertising, publicity,
or other promotional activities any name, trade name, trademark, or other
designation of either party hereto (including contraction, abbreviation or
simulation of any of the foregoing). Unless required by law, the use by LICENSEE
of the name, "The Regents of the University of California" or the name of any
campus of the University Of California is prohibited, without the express
written consent of UNIVERSITY.
9.2 UNIVERSITY
may disclose to the Inventors the terms and conditions of this Agreement upon
their request. If such disclosure is made, UNIVERSITY shall request the
Inventors not disclose such terms and conditions to others.
9.3 UNIVERSITY
may acknowledge the existence of this Agreement and the extent of the grant
in
Article 2 to third parties, but UNIVERSITY shall not disclose the financial
terms of this Agreement to third parties, except where UNIVERSITY is required
by
law to do so, such as under the California Public Records Act.
10.1 Correspondence.
Any
notice or payment required to be given to either party under this Agreement
shall be deemed to have been properly given and effective:
(a)
on
the date of delivery if delivered in person, or
(b)
five
(5) days after mailing if mailed by first-class or certified mail, postage
paid,
to the respective addresses given below, or to such other address as is
designated by written notice given to the other party.
If
sent
to LICENSEE:
▇▇▇
▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇
▇▇▇
▇▇▇▇▇▇,
▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
Attention:
President, CEO
If
sent
to UNIVERSITY by mail:
University
of California, San Diego
Technology
Transfer & Intellectual Property Services
▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇
Mail
Code
▇▇▇▇
▇▇
▇▇▇▇▇,
▇▇ ▇▇▇▇▇-▇▇▇▇
Attention:
Assistant Vice Chancellor
If
sent
to UNIVERSITY by courier:
University
of California, San Diego
Technology
Transfer & Intellectual Property Services
▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇
▇▇▇▇▇ Center North, ▇▇▇▇▇ ▇▇▇▇▇
▇▇
▇▇▇▇▇,
▇▇ ▇▇▇▇▇
Attention:
Assistant Vice Chancellor
For
wire
payments to UNIVERSITY:
All
payments due UNIVERSITY and made by wire transfers shall include an additional
wire transfer fee of twenty-five dollar (US$25) to the amount due. Wire
transfers shall be made using the following information:
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UCSD
receiving bank name:
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Bank
of America
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UCSD
bank account no.:
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▇▇▇▇-▇-▇▇▇▇▇
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UCSD
bank routing (ABA) no.:
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▇▇▇▇▇▇▇▇▇
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UCSD
bank account name:
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Regents
of UC
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UCSD
bank ACH format code:
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CTX
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UCSD
bank address:
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Bank
of America
▇▇
▇▇▇ ▇▇▇▇▇
▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
▇.▇.▇.
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UCSD
addendum information:
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Reference
UCSD-TechTIPS Case
No.:
▇▇▇▇-▇▇▇
Department
contact: Financial Manager
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A
fax copy of the transaction receipt should be sent to Financial Manager at:
(▇▇▇) ▇▇▇-▇▇▇▇. LICENSEE is responsible for all bank charges of wire transfer
funds. The bank charges should not be deducted from total amount due to the
Regents of the University of California
10.2 Secrecy.
(a)
"Confidential Information" shall mean information relating
to the Invention and disclosed by UNIVERSITY to LICENSEE during the term of
this
Agreement, which if disclosed in writing shall be marked "Confidential", or
if
first disclosed otherwise, shall within thirty (30) days of such disclosure
be
reduced to writing by UNIVERSITY and sent to LICENSEE:
(b)
Licensee shall:
(i) use
the
Confidential Information for the sole purpose of performing under the terms
of
this Agreement;
(ii) safeguard
Confidential Information against disclosure to others with the same degree
of
care as it exercises with its own data of a similar nature;
(iii) not
disclose Confidential Information to others (except to its employees, agents
or
consultants who are bound to LICENSEE by a like obligation of confidentiality)
without the express written permission of UNIVERSITY, except that LICENSEE
shall
not be prevented from using or disclosing any of the Confidential Information
that:
(A) LICENSEE
can demonstrate by written records was previously known to it;
(B) is
now,
or becomes in the future, public knowledge other than through acts or omissions
of LICENSEE;
(C)
is
lawfully obtained by LICENSEE from sources independent of UNIVERSITY;
or
(D) is
required to be disclosed by law or a court of competent jurisdiction;
and
(c) The
secrecy obligations of LICENSEE with respect to Confidential Information shall
continue for a period ending five (5) years from the termination date of this
Agreement.
10.3 Assignability.
This
Agreement may be assigned by UNIVERSITY, but is personal to LICENSEE and
assignable by LICENSEE only with the written consent of UNIVERSITY.
10.4 No
Waiver.
No
waiver by either party of any breach or default of any covenant or agreement
set
forth in this Agreement shall be deemed a waiver as to any subsequent and/or
similar breach or default.
10.5 Failure
to Perform.
In the
event of a failure of performance due under this Agreement and if it becomes
necessary for either party to undertake legal action against the other on
account thereof, then the prevailing party shall be entitled to reasonable
attorney's fees in addition to costs and necessary disbursements.
10.6
Governing
Laws.
THIS
AGREEMENT SHALL BE INTERPRETED AND CONSTRUED IN ACCORDANCE WITH THE LAWS OF
THE
STATE OF CALIFORNIA, but the scope and validity of any patent or patent
application shall be governed by the applicable laws of the country of the
patent or patent application.
10.7 Force
Majeure.
A party
to this Agreement may be excused from any performance required herein if such
performance is rendered impossible or unfeasible due to any catastrophe or
other
major event beyond its reasonable control, including, without limitation, war,
riot, and insurrection; laws, proclamations, edicts, ordinances, or regulations;
strikes, lockouts, or other serious labor disputes; and floods, fires,
explosions, or other natural disasters. When such events have abated, the
non-performing party's obligations herein shall resume.
10.8 Headings.
The
headings of the several sections are inserted for convenience of reference
only
and are not intended to be a part of or to affect the meaning or interpretation
of this Agreement.
10.9 Entire
Agreement. This
Agreement embodies the entire understanding of the parties and supersedes all
previous communications, representations or understandings, either oral or
written, between the parties relating to the subject matter hereof.
10.10 Amendments.
No
amendment or modification of this Agreement shall be valid or binding on the
parties unless made in writing and signed on behalf of each party.
10.11
Severability.
In the
event that any of the provisions contained in this Agreement is held to be
invalid, illegal, or unenforceable in any respect, such invalidity, illegality
or unenforceability shall not affect any other provisions of this Agreement,
and
this Agreement shall be construed as if the invalid, illegal, or unenforceable
provisions had never been contained in it.
IN
WITNESS WHEREOF,
both
UNIVERSITY and LICENSEE have executed this Agreement, in duplicate originals,
by
their respective and duly authorized officers on the day and year
written.
| NEOPROBE, INC.: | THE REGENTS OF THE | |||
| UNIVERSITY OF CALIFORNIA: | ||||
| By: |
/s/
▇▇▇▇▇ ▇. ▇▇▇▇
|
By: |
/s/
▇▇▇▇ ▇. ▇▇▇▇
|
|
|
(Signature)
|
(Signature)
|
|||
|
Name:
▇▇▇▇▇ ▇. ▇▇▇▇
|
▇▇▇▇
▇. ▇▇▇▇, M.B.A, Ph.D.
|
|||
|
Title:
President and CEO
|
Assistant
Vice Chancellor, Technology Transfer & Intellectual Property
Services
|
|||
|
Date:
April 14, 2005
|
Date:
April 8, 2005
|
|||
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