INTERNATIONAL LICENSE AGREEMENT
THIS
INTERNATIONAL LICENSE AGREEMENT (“Agreement”)
is
made
as of this day of ______, 2006,
("Effective Date") by and between NanoLogix, Inc., a Delaware corporation having
a place of business at ▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇, ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
(“Licensor”),
and
Nutra Pharma Corp., a California corporation having a place of business at
▇▇▇▇
▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇ (“Licensee”)
(each,
a “Party”
and
together, the “Parties”).
WHEREAS,
Licensor is the owner of certain Licensed Patents, Licensed Technology and
trade
secrets;
WHEREAS,
Licensee desires to acquire a license for use of the Licensed Technology in
the
development, commercialization and sale of the Licensed Products within the
Field of Use (as defined below), both domestically and internationally;
and
WHEREAS,
Licensor has the power and authority to grant Licensee such a license
domestically and in certain countries;
NOW,
THEREFORE, in consideration of the payments made and to be made to Licensor
by
Licensee and the mutual promises and covenants contained herein and other good
and valuable consideration, the sufficiency of which is hereby acknowledged,
the
Parties, intending to be legally bound, hereby agree as follows:
1. Definitions.
As
used
in this Agreement, the following terms
and
variations thereof
shall
have the meanings below:
1.1 “Affiliate”
and
“Affiliates”
mean
any individual, corporation, subsidiary, affiliate, partnership, association,
business, organization or other entity that, directly or indirectly through
one
or more intermediaries, controls, or is controlled by, or is under common
control with, a Party and/or such entities. The term “control” (including the
terms “controlling,” “controlled by” and “under common control with”) means the
possession, direct or indirect, of the power to direct or cause the direction
of
the management or policies of an individual or entity, whether through the
ownership of voting shares, by contract or otherwise.
1.2 “Agreement”
has
the
meaning set forth in the preface to this Agreement.
1.3 “Bankruptcy
Code”
means
the Bankruptcy Code of the United States, as amended.
1.4 “Buffer
Products"
means
certain of Licensor's
products utilizing Licensor's trade secrets, including "AFZ", the "Adaptor
Buffer" and other related formulas.
1.5 “Calendar
Quarter”
means
each of the three-month periods ending March 31, June 30, September 30 and
December 31 in any given calendar year.
1
1.6 "Calendar
Year"
means
the 12-month period beginning January 1 and ending on December 31 in any given
calendar year.
1.7 “Effective
Date”
has
the
meaning set forth in the preface to this Agreement.
1.8 “Field
of Use”
with
regard to the Licensed Technology, Licensed Patent(s) and Licensed Product(s)
means the detection and identification of human and veterinary identification
of
Atypical Mycobacteria, Tuberculosis, Mycobacterium Avium Intracellulare (MAI),
Mycobacteria, Paratuberculosis, Nocardia and Pseudomonas for disease
identification, and antibiotic assaying (but
such
assaying does not include antibiotic assaying when those antibiotics or
compounds are derived from by-products obtained through growing microorganisms
using Licensor’s IP) for determining the antimicrobial agent sensitivity of
microorganisms to ascertain which antibiotics are efficacious against
microorganisms in the field of health which may lead to drug discoveries;
and
excludes
any other uses, including any use reserved for the Licensor as specified in
the
Realm of Use, and excludes kits for any other uses, which uses or kits are
reserved to Licensor, including but not limited to uses, kits, or bioreactors
pertaining to bioremediation, apoptosis, nanotechnology, biomems, microfluidic
devices, the production of hydrogen and the identification and growing of over
32 different paraffin-eating and non-paraffin eating microorganisms to collect
any microbial by-products of any kind, including antibiotics (all of which
fall
under the Realm of Use of the Licensor). Further, the Field of Use does not
include any industrial use of the Licensed Technology, Licensed Patent(s) and
Licensed Product(s). Whereas
the Field of Use and the Realm of Use both provide for certain uses within
the
area of health, the Licensee, with regard to the Licensed Technology, Licensed
Patent(s) and Licensed Product(s) is limited to only the uses within the areas
of health that are specified in the Field of Use.
1.9 “Force
Majeure Event”
has
the
meaning set forth in Section 13.12.
1.10 “Gross
Sales Price”
means
the greater of the gross sales price actually invoiced or collected by Licensee
for Products sold by Licensee or any Affiliate of Licensee, less all returns
and
credits, of such gross sales price.
1.11 "Intellectual
Property"
or
"IP"
means
any and all copyrights, patents, patent applications, trademarks, or trade
secrets protectable by law from which the party asserting ownership has the
right to prevent others in its use, or require payment for its use.
1.12 “License”
or
“Licensed”
has
the
meaning set forth in Section 3.1.
1.13 “Licensed
Patents”
means
only those Patents set forth in Exhibit A and does
not
include any of the Licensor’s Patents nor any other of Licensor's Intellectual
Property not explicitly listed on Exhibit A as Licensed Patents.
1.14 “Licensed
Product”
and
“Licensed
Products”
mean
those products, including the Medical diagnostic kits and Buffer Products,
as
set forth on Exhibit B and incorporating one or more claims made in the Licensed
Patents or incorporating other Intellectual Property belonging to Licensor.
Licensed Products do
not
include products derived from any of the Licensor’s patents which are not listed
on Exhibit A as Licensed Patents, except as otherwise expressly provided herein.
Further, Licensed Products do not include products derived from any of
Licensor’s currently pursued provisional, pending patents, and continuation
patents, which remain the exclusive property of Licensor.
2
1.15 “Licensed
Technology”
means
the Licensed Patents and Licensed Products and technology limited to the Field
of Use described herein, or improvements developed by Licensee in connection
with, related to, arising from, used in the making of and/or embodied in the
Products and Patents listed in this Agreement, and such Licensed Technology,
which covers human medical and veterinary products designed to identify 32
different paraffin eating microorganisms or which cover human medical and
veterinary products designed for determining antimicrobial agent sensitivity,
and are to be solely used by the Licensee for the detection and identification
of human and veterinary identification of Atypical Mycobacteria, Tuberculosis,
Mycobacterium Avium Intracellulare (MAI), Mycobacteria, Paratuberculosis,
Nocardia and Pseudomonas for disease identification and for antimicrobial agent
sensitivity assaying which may result in drug discovery applications, during
the
Term hereof. Licensed
Technology does not include technology derived from any of the Licensor’s
patents which are not listed on Exhibit A as Licensed Patents. Further, Licensed
Technology does not include technology of Licensor's IP derived from any of
Licensor’s currently pursued provisional, pending patents, and continuation
patents, which remain the exclusive property of Licensor.
1.16 “Licensee”
has
the
meaning set forth in the preface to this Agreement.
1.17 “Licensor”
has
the
meaning set forth in the preface to this Agreement.
1.18 “Licensee
Indemnitees”
has
the
meaning set forth in Section
12.1.
1.19 “Party”
and
“Parties”
have
the meaning set forth in the preface to this Agreement.
1.20 “Patent
Rights”
shall
mean (i) unexpired letters patent which have not been held invalid or
unenforceable by a court of competent jurisdiction from which no appeal can
be
taken or has been taken within the required time period, including without
limitation any substitution, extension, registration, confirmation, reissue,
re-examination, renewal, supplementary protection certificate or any like filing
thereof and (ii) pending applications for letters patent, including without
limitation any provisional, converted provisional, continued prosecution
application, continuation, divisional or continuation-in-part thereof together
with all know-how owned, created and/or developed by Licensor in whole or in
part.
1.21 “Person”
means
any individual, governmental authority, corporation, limited liability company,
partnership, trust or other entity.
1.22 “Realm
of Use”
with
regard to the Licensors use of the Licensed Technology, Licensed Patent(s)
and
Licensed Product(s) means the use
of
the licensed technology, licensed patents and licensed products for all uses,
including but not limited to (a) hydrogen
production applications (b) augmenting growth of microorganisms to collect
any
microbial by-products, including but not limited to hydrogen, antibiotics,
or
any chemical synthesis (c) bioremediation (d) apoptosis (e) nanotechnology,
(f) biomems, for all uses, including but not limited to medical uses, (g)
microfluidic devices, for all uses, including but not limited to medical uses,
(h) identification and detection of over 32 different paraffin-eating and
non-paraffin-eating microorganisms, other than for the identification of
Atypical Mycobacteria, Tuberculosis, Mycobacterium Avium Intracellulare (MAI),
Mycobacteria, Paratuberculosis, Nocardia and Pseudomonas for disease diagnosis
(unless associated with biomems, microfluidic devices, or nanotechnology),(i)
testing for antimicrobial agent sensitivity of microorganisms included but
not
limited to using such technology for controlling growth of undesirable
microorganisms in a bioreactor and using such technology to test the efficacy
of
antibiotic compounds or other compounds which may be collected as by-products
from using the Licensed Technology to identify and grow microorganisms and
(j)
any industrial use whatsoever; but excludes using the Licensed Technology,
Licensed Patent(s) and Licensed Product(s) for (a) the detection and
identification of human and veterinary identification of Atypical Mycobacteria,
Tuberculosis, Mycobacterium Avium Intracellulare (MAI), Mycobacteria,
Paratuberculosis, Nocardia and Pseudomonas for disease identification test
kits
(unless associated with biomems, microfluidic devices, or nanotechnology) and
(b)selling
test kits or providing diagnostic services in the field of health for
determining the antimicrobial agent sensitivity of microorganisms to ascertain
which antibiotics are efficacious against microorganisms in the field of
health
diagnosis (unless associated with biomems, microfluidic devices, or
nanotechnology).
Whereas
the Field of Use and the Realm of Use both provide for certain uses within
the
area of health, the Licensee, with regard to the Licensed Technology, Licensed
Patent(s) and Licensed Product(s) is limited to only the uses within the areas
of health that are specified in the Field of Use.
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1.23 “▇▇▇▇▇▇▇▇-▇▇▇▇▇▇
Act”
means
the ▇▇▇▇▇▇▇▇-▇▇▇▇▇▇ Antidiscrimination Act, as amended.
1.24 “Royalty
Fee”
and
“Royalty
Fees”
mean
the fees paid to Licensor by Licensee for the License.
1.25 “Exclusive
License”
means
the Licensor undertakes not to grant the right to use the intellectual property
hereby leased to Licensee within the Field of Use to any other licensee but
Licensor reserves to right to use Licensor’s intellectual property hereby leased
to Licensee for any use within the Realm of Use.
1.26 “Sublicense”
means
a license
giving rights of production or marketing of products or services, given by
the
Licensee to a person or company that is not the primary holder of such rights,
which comprise rights to the Licensed Patents, Licensed Technology and/or
Licensed Products and a “Sublicensee” shall mean any person, company or other
legal entity other than Licensee who has been granted by Licensee a Sublicense
to the rights to the Licensed Patents, Licensed Technology and/or Licensed
Products to make, use or sell the Licensed Product or Licensed
Technology.
1.27 “Term”
has
the
meaning set forth in Section 2.1.
1.28 “Third
Party”
and
“Third
Parties”
mean
one or more persons or entities other than Licensor, Licensee or their
respective Affiliates.
1.29 “United
States”
means
the United States of America and its possessions and territories.
4
2. Effective
Date and Term.
2.1 This
Agreement shall be effective when all of the requirements and conditions
provided under Section 13.19 Closing
of Agreement and Conditions Thereto
are met,
including but not limited to the transfer of 4,593,170
shares of capital stock of Nanologix, Inc./Infectech, Inc to the
Licensor
and the
execution of the Patent Assignment Agreement, in which event, this Agreement
shall be effective as of the Effective Date recited on page one of
the
Agreement as long as the Agreement has been agreed upon and executed by the
Parties and will continue in perpetuity until the latest expiration date of
any
Licensed Patent, or as long as Licensee sells any products within the Field
of
Use based upon any of the Licensed Patents, Licensed Products and/or Licensed
Technology, whichever is later; or unless terminated earlier as expressly
provided in this Agreement.
3. Exclusive
License within Field of Use.
3.1 Beginning
on the Effective Date, Licensor hereby grants to Licensee an Exclusive License
for the use of the Licensed Patents listed on Exhibit A limited to use within
the Field of Use, with domestic and worldwide royalty-bearing license rights
(“License”),
limited to the United States and those countries for which Licensor has obtained
patent protection, which is further limited to unexpired letters patent which
have not been held invalid or unenforceable by a court of competent jurisdiction
from which no appeal can be taken or has been taken within the required time
period, and such rights further limited to the Field of Use, and to the
following:
(a) to
make,
have made, use, sell, import and sublicense the Licensed Technology solely
within the Field of Use for the purposes of manufacturing, assembling,
distributing, leasing, renting, performing research, and selling the Licensed
Products solely within the Field of Use.
(b) sublicensing
or subcontracting the manufacture, assembly, distribution and sale of the
Licensed Products solely to be used within the Field of Use.
3.2 Licensor
will continue to actively pursue expansion of its patent protection
internationally. As Licensor secures these protections, the License described
in
Section 3.1 shall cover use of the specific Licensed Patents, Licensed Products,
and Licensed Technology in said countries, within the Field of Use.
3.3 Licensor
retains all rights related to the Licensed Patents, Licensed Products, Licensed
Technology, trade secrets and referred to in this Agreement, as well as all
other Intellectual Property belonging to the Licensor, except as expressly
stated in Section 3.1.
Licensor
may, at any time and without the consent of Licensee, assign or transfer its
rights related to any of the Licensed
Patent(s), Licensed Product(s) and/or Licensed
Technology, for
any
use outside the Field of Use and not otherwise inconsistent with this
Agreement.
3.4 Upon
Licensee’s request, Licensor shall provide to Licensee copies of all reasonably
related research, documents, and notes possessed by Licensor, including, but
not
limited to, the findings of ▇▇. ▇▇▇▇ ▇▇▇▇▇ of Ohio State University. Licensee
shall keep such information confidential as provided in Section 13.22 and
elsewhere in this agreement.
5
4. Royalties
and Fees.
4.1 During
the Term hereof, and in consideration of the License set forth in Article 3,
Licensee agrees to pay Licensor a Royalty Fee which shall be equal to the
greater of (a) the Minimum Royalty Fee, as described in Section 4.2, or (b)
six
percent (6%) of the Gross Sales Price of all products and/or services sold
by
Licensee or any of its Affiliates based upon, directly or indirectly, the
Licensed Technology, Licensed Patent(s), Licensed Product(s)
and/or
any direct or indirect utilization of trade secrets of the Licensor within
the
Field of Use during the Term, and upon any products or services sold by the
Licensee within the Field of Use that are the result of the improvement on
or
development of additional Intellectual Property developed by the Licensee based
upon the Licensed Technology, Licensed Patent(s), Licensed Product(s), and/or
trade secrets of the Licensor, within the Field of Use, including all products
sold within the Field of Use that include modifications, additions, enhancements
and improvements to the Licensed Patents, Licensed Products, Licensed Technology
and/or trade secrets of the Licensor.
4.2 Licensee
shall pay to Licensor a Minimum Royalty Fee of $20,000 in the first calendar
year, $20,000 in the second calendar year, $40,000 in the third calendar year,
$80,000 in the fourth calendar year, and $160,000 in each calendar year after
that, through the termination of this Agreement. This Minimum Royalty Fee due
under this Agreement shall be reduced by any royalty amounts paid under the
Patent Assignment Agreement executed contemporaneously with this
Agreement.
4.3 If
any
Licensed Patent(s), Licensed Product(s), and/or Licensed Technology, or other
Licensor trade secrets within the Field of Use is directly or indirectly a
component of usage by the Licensee or Sublicensee, all Royalties Fees required
in this Agreement must be fully paid or Licensee will be in breach of the
Agreement.
4.4 The
Royalty Fee for payments actually received (or discounted in the case of
conditional contract sales and rentals) during each Calendar Quarter based
upon
invoiced sales will be paid to Licensor within sixty (60) days after the end
of
each Calendar Quarter, provided, however, that all Royalty Fees based upon
any
sales by a sublicensor or subcontractor (which also manufactures and assembles)
shall accrue in the Calendar Quarter the sublicensing fees are received by
Licensee, but shall accrue no later than the Calendar Quarter immediately
subsequent to the Calendar Quarter in which the relevant sales were originally
invoiced, regardless of whether licensee has or has not received payments from
sublicensor or subcontractor.
4.5 Royalty
Fee payments will be accompanied by account statements certified as accurate
and
complete by Licensee for each Calendar Quarter setting forth the amount of
invoiced sales, payments received and credits in the aggregate and separately
for each Licensed Product by serial number to the extent possible. If Licensor
has not received any Royalty Fees payment within thirty (30) days of the date
it
is due and payable, Licensor may serve Licensee notice providing Licensee thirty
(30) days to correct such payment deficiency, with interest, or be considered
in
breach of this Agreement.
6
4.6 Information
regarding the
gross
revenues for all projects, uses and applications of Licensee shall be made
available to the Licensor, with an indication made as to which utilized
Licensor’s IP. Licensor shall be entitled to, on reasonable notice to Licensee,
examine the books and records of any and all Licensed Product sales of Licensee
from time to time, and shall be entitled to an annual audit of said books and
records, at the option and expense of Licensee. Licensor shall be provided
with
all information reasonably requested in order to verify the indication as to
whether Licensor’s IP was utilized or not as to all projects and all information
regarding the details and supporting documentation of the revenues, projects,
uses and applications. Licensee shall make a written certification in form
and
substance acceptable to Licensor, delivered on a monthly basis to the parties
by
the 15th
day of
each month for the prior month’s uses, application and work of Licensor,
summarizing the information, validating its accuracy and stating the amount
of
royalties due to Licensor.
5. Royalties
to be Paid For Sublicenses.
5.1 Licensee
shall pay Licensor an amount equal to six percent (6%) of the Gross Sales Price
of all products and/or services sold by anyone operating under a Sublicense
from
Licensee based upon, directly or indirectly, the Licensed Technology, Licensed
Patent(s), Licensed Product(s)
and/or
any direct or indirect utilization of trade secrets of the Licensor within
the
Field of Use.
5.2 Licensee
shall provide to Licensor the same information and access to all records,
reports and data regarding sales resulting from Sublicenses as that set forth
in
Sections 4.5 and 4.6 and otherwise in this Agreement. Licensee shall make
payment and written certification relating to all Sublicenses and Royalty Fees
in similar form and substance to the certification required in Sections 4.4,
4.5
and 4.6.
6. Intellectual
Property Rights.
6.1 Licensor
retains the full extent of its rights with regard to any new patents based
on
the Licensed Patents, Licensed Products, Licensed Technology, or any other
Intellectual Property belonging to Licensor. If, however, Licensee is
nonetheless issued any patent(s) based in any part on, or informed in any part
by, any of the Licensed Patents, Licensed Products, Licensed Technology, or
any
other Intellectual Property belonging to Licensor, Licensee's right to use,
and
right to allow others to use, such patents will be limited to the Field of
Use,
and Licensor will have the right to use all such patents royalty-free, for
the
duration of the patent period. Licensee, upon request by Licensor from time
to
time, shall keep Licensor apprised of the status of all such applications,
any
pending patent applications and patents issued therefrom.
6.2 Survival.
The
provisions of this clause will survive termination of this
Agreement.
7
7. Maintenance
Costs of Licensed Patents.
Licensor
shall diligently prosecute and maintain the United States and foreign patents
and patent applications comprising the Licensed Patents as listed in Exhibit
A.
Control over the prosecution of any patent application shall remain vested
with
Licensor.
8. Termination.
8.1 Licensor
Termination.
Licensor may terminate this Agreement upon Licensee’s material breach of this
Agreement or the Patent Assignment Agreement, executed contemporaneously with
this Agreement, that is not remedied within thirty (30) days after receipt
of
Licensor’s written notice of such breach;
8.2 Licensee
Termination.
Licensee may terminate this Agreement upon Licensor’s material breach of this
Agreement or the Patent Assignment Agreement, executed contemporaneously with
this Agreement, that is not remedied within thirty (30) days after Licensor’s
receipt of written notice of such breach;
8.3 Effect
of Termination.
(a) Upon
termination of this Agreement by either Party, all rights granted to Licensee
under this Agreement will revert to Licensor, free and clear of any lien,
security interest or other encumbrance, and Licensee and its Affiliates and
Sublicensees shall immediately cease the manufacture, assembly, distribution,
sale, promotion, advertising and marketing of Licensed Products and any other
products referenced in Section 4.1; provided, however, Licensee shall have
the
right to continue to market and sell existing products in inventory as of the
date of termination for a reasonable period following such termination, during
which time Licensee will continue to pay the Royalty Fees set forth in Section
4.1.
(b) Upon
termination of this Agreement by either Party, all Royalty Fees due and payable
in accordance with the terms of this Agreement must be paid to Licensor in
accordance with the terms hereof.
(c) Each
Party agrees to cooperate with the other Party in the smooth transfer of
Licensed Technology to Licensor upon termination.
9. Non-
Competition.
9.1 During
the Term, Licensee shall not be employed by, render services to, represent
or
otherwise be affiliated with any Person or Sublicensee in connection with any
product, technology, or service directly or indirectly competitive with
Licensor, unless solely limited to within the Field of Use. During the Term,
Licensee shall not manufacture, assemble, distribute or sell any product or
service that infringes upon Licensor's IP, including, but not limited to
hydrogen production, bioremediation, apoptosis, and identifying and growing
microorganisms to collect by-products, or for industrial use. Further, Licensee
shall not Sublicense to, nor make assignments to, any Person or entity engaging
in the aforementioned infringements upon Licensors IP. Licensee will adhere
at
all times to the ▇▇▇▇▇▇▇▇-▇▇▇▇▇▇ Act regarding the sale of Licensed
Products.
8
9.2 During
the Term, Licensor shall not be employed by, render services to, represent
or
otherwise be affiliated with any Person or licensee in connection with any
product, technology, or service directly or indirectly competitive with Licensee
exclusively within the Field of Use, without the written consent of
Licensee.
10. No
Representations or Warranties.
10.1 Except
for the warranty of title to the patents issued by the United States Patent
Office, Licensor makes no other representations or warranties, expressed or
implied, with respect to the Licensor's IP. Among other things, Licensor
disclaims any express or implied warranty:
(a)
of
merchantability, of fitness for a particular purpose,
(b)
of
non-infringement or
(c)
arising out of any course of dealing
Further,
with respect to the Licensed Products and Licensed Technology, Licensor makes
no
representations or warranties, expressed or implied, that such products and
technology can be used by Licensee other than for Research Use Only. “Research
Use Only” means research that is not-for profit, internal research, or research
that is for the purposes of evaluating use of the Licensed Products for
commercial purposes.
11. No
Joint Venture.
11.1 The
parties hereto acknowledge that nothing set forth in this Agreement nor the
transactions contemplated herein shall constitute a joint venture, partnership,
agency or any relationship other than Licensee as a licensee and Licensor as
a
licensor entitled to royalty payments as provided herein.
12. Indemnification.
12.1 Licensee
agrees to indemnify, and hold harmless Licensor, its officers, directors,
employees, agents, successors and permitted assigns (singularly or collectively,
the “Licensee Indemnitees”) from and against all liability, damage, loss, or
expense (including reasonable attorneys, fees and expenses of litigation)
incurred by or imposed upon the Licensee Indemnitees or any one of them in
connection with any claims, suits, actions, demands, or judgments arising out
of
or connected with this Agreement. Licensor will promptly notify Licensee of
any
claim and will cooperate with Licensee in the defense of the claim.
Licensee will, at its own expense, provide attorneys reasonably acceptable
to
Licensor to defend against any claim with respect to which Licensee has agreed
to indemnify Licensor. This indemnity will not be deemed excess coverage
to any insurance or self-insurance Licensor may have covering a claim.
Licensee’s indemnity will not be limited by the amount of Licensor’s
insurance.
9
12.2 Survival.
The provisions of this clause will survive termination of this
Agreement.
13. General
Provisions.
13.1 All
dollar amounts are in United States dollars. All fees and charges shall be
invoiced and paid in United States dollars.
13.2 Licensee
shall keep complete and accurate books and records with respect to the
manufacture, assembly, distribution and sale of the Licensed Products according
to generally accepted accounting principles. Licensor has the right, through
an
independent accountant retained by and at the sole expense of Licensor, subject
to reasonable confidentiality provisions of Licensee, to inspect Licensee’s
books and records relating to the subject matter of this Agreement once per
Calendar Quarter, on reasonable notice to Licensee, during regular business
hours, at the place where such books and records are normally kept, and to
the
extent reasonably necessary to determine the accuracy of any Royalty Fees to
be
paid under this Agreement. Licensee will provide to Licensor any audit conducted
on itself, certified or otherwise, that contains section(s) pertaining to
Royalty Fees.
13.3 Licensee
is entitled to rely on the financial reports submitted to it by its Affiliates
and Sublicensees, and Licensee is not required to verify such reports by actual
inspection of its Affiliates’ or Sublicensees’ books and records. However,
Licensee shall require its Affiliates and Sublicensees to keep complete and
accurate books and records with respect to the manufacture, assembly,
distribution and sale of the Licensed Products according to generally accepted
accounting principles and make all said books and records available for review
by Licensor through an independent accountant retained by and at the sole
expense of Licensor on a quarterly basis in a similar manner and for similar
periods as Licensee is required in Section 13.2. Licensee shall make
available to Licensor the results of any audit it conducts of its Affiliates
or
Sublicensees to the extent related to the accuracy of any Royalty Fees paid
under this Agreement.
13.4 Licensor
shall keep confidential, and not disclose to any Person, any and all information
obtained by Licensor in such inspections and reports provided under
Sections 13.2 and 13.3, except in connection with any action to enforce
Licensor’s rights under this Agreement.
13.5 Notices.
Any
notices or other communications required or permitted to be given or delivered
under this Agreement shall be provided by email (provided that (i) the sender’s
computer system is capable of retaining and does retain a record establishing
that the email message was actually delivered to the recipient’s email server,
and (ii) that such email is accompanied by a facsimile communication (not
requiring telephonic voice confirmation)), or in writing (including facsimile
communication), which shall be sufficiently given if delivered personally,
mailed by certified first-class United States mail, postage prepaid, or sent
via
reputable overnight delivery courier or any other means for which a proof of
delivery is provided. Notices shall be sent to a Party at its address as set
forth below, or to such other address as has been designated by the other Party
in accordance with this Section. Any notice by fax shall be deemed given when
telephonic (voice) confirmation of receipt is received, and any other notices
shall be deemed given on the date delivered or five (5) days after being placed
in the mails as specified.
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For
Licensee:
▇▇▇▇
▇▇▇▇
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Attention:
President
and
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▇▇▇▇▇▇▇ & Company
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Attention:
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with
a
copy to:
▇▇▇▇
▇▇▇▇▇▇▇ LLP
1999
Avenue of the Stars, ▇▇▇▇▇ ▇▇▇▇
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Attention:
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For
Licensor:
NanoLogix,
Inc.
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▇▇▇▇▇▇,
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Attention:
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with
a
copy to:
Atty
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ and Associates
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Phone:
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Fax:
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13.6 Successors
and Assigns.
This
Agreement shall be binding on and enure to the benefit of the successors and
assigns of both parties hereto and all persons or corporations succeeding to
or
acquiring the business now carried on by Licensor or Licensee.
13.7 Waiver.
The
waiver by either Party to insist upon strict compliance with this Agreement
or
to exercise any right or remedy hereunder shall not constitute a waiver of
the
right of said party to insist upon strict compliance with this Agreement or
to
exercise any rights or remedies provided herein at any other time or under
the
same or similar circumstances.
11
13.8 Severability.
Should
any term or provision of this Agreement be declared invalid or unenforceable
in
whole or in part by a court of competent jurisdiction, then this Agreement
shall
be construed and interpreted as if said term or provision were not included
herein, however all other terms and provisions hereof shall remain valid and
enforceable and the application of such invalid or unenforceable terms and
provisions to parties unaffected by such determination to the fullest extent
permitted by law.
13.9 Governing
Law; Jurisdiction and Venue.
The
parties agree that this Agreement will be construed and enforced pursuant to
the
laws of the Commonwealth of Pennsylvania, and venue and jurisdiction will lie
within said Commonwealth, subject to the arbitration provisions set forth
herein, notwithstanding the principles of conflicts of laws.
13.10 Arbitration.
The
parties hereby agree that any dispute, claim or controversy arising out of
the
construction, interpretation or application of this Agreement and its provisions
shall be decided by mandatory arbitration conducted under the Rules of the
American Arbitration Association to be decided in Pittsburgh, Pennsylvania.
Enforcement and collection of any award made hereunder, however, shall be
available to the prevailing party in any court of competent jurisdiction.
13.11 Counterparts.
This
Agreement may be executed in one or more counterparts as the parties shall
deem
desirable, each of which shall be deemed an original, but all of which shall
constitute the same instrument. However, in any action to enforce or with regard
to this Agreement, it shall not be necessary to produce all such
counterparts.
13.12 Force
Majeure.
Neither
Party shall be liable for any default or delay in the performance of its
obligations hereunder to the extent such default or delay is caused, directly
or
indirectly, by fire, flood, earthquake, elements of nature, or Acts of God;
acts
of war, terrorism, riots, civil disorders, rebellions, or revolutions; strikes,
lockouts, or labor difficulties; or any other similar cause beyond the
reasonable control of such Party (a “Force
Majeure Event”).
These
delays shall not constitute a breach of this Agreement and the non-performing
Party will be excused from any further performance or observance to the
obligations so affected by the Force Majeure Event for as long as the Force
Majeure Event exists and such Party continues to use its best efforts to
recommence performance or observance whenever and to whatever extent possible
without delay. Any Party so delayed in its performance will immediately notify
the other Party by telephone (confirmed in writing within two (2) business
days
of the inception of such delay).
13.13 Further
Assurances.
Each
Party hereto agrees to cooperate with the other to execute any and all documents
or instruments, or to obtain any consents, in order to assign, transfer,
perfect, record, maintain, enforce or otherwise carry out the intent and
purposes of the terms of this Agreement.
12
13.14 Entire
Agreement; Headings.
This
Agreement, including all exhibits and/or schedules attached hereto, completely
and exclusively states the agreement of the Parties regarding its subject
matter. It supersedes, and its terms govern, all prior or contemporaneous
proposals, agreements or other communications between the Parties, oral or
written, regarding such subject matter. Titles and captions are used for
convenience of reference only and do not constitute a part of the Agreement
or
limit, expand or construe its terms. This Agreement will not be modified except
by a subsequently dated written amendment signed on behalf of each Party by
its
duly authorized representatives.
13.15 Principles
of Construction.
All
references to this Agreement shall be deemed to include the exhibits, schedules
and other attachments. All references to sections are to the sections herein
and
all references to exhibits and/or schedules, are to the exhibits and/or
schedules which are attached hereto and made a part hereof, as if fully set
forth herein. The words “hereof,”
“herein”
and
“hereunder”
and
words of similar import when used in this Agreement shall refer to this
Agreement as a whole and not to any particular provision of this Agreement,
except where explicitly stated to the contrary.
13.16 Negotiation
and Drafting.
The
Parties have participated jointly in the negotiation and drafting of this
Agreement. In the event an ambiguity or question of intent or interpretation
arises, this Agreement (and any applicable or relevant provision) shall be
construed as if jointly drafted by the Parties, and no presumption or burden
of
proof shall arise favoring or disfavoring any one Party by virtue of the
authorship of any of the provisions of this Agreement.
13.17 Use
of Marks.
Licensor may not use any trademarks of Licensee or its Affiliates without the
prior express written permission of Licensee. Licensee may not use any
trademarks of Licensor without the prior express written permission of Licensee
or unless usage of such specific trademark is granted in this
Agreement.
13.18 Export
Control Laws.
Licensee
shall observe all applicable United States and foreign laws with respect to
the
transfer of Licensed Product(s), licensed process(es), and related technical
data, to foreign countries, including, without limitation, the Export
Administration Regulations.
13.19 Closing
of Agreement and Conditions Thereto.
This
Agreement becoming binding and effective by the Parties is subject to final
approval by a majority vote by the Licensor’s Board of Directors. At
the
option of either party, this Agreement may be declared null and void if not
ratified by a majority of shareholders within ninety after closing.
Further, this Agreement will not be binding upon the Parties until it has been
signed below on behalf of each party, the corresponding Patent Assignment
Agreement has also been signed on behalf of each party and is effective, and
transfer of ownership shall have been made by Licensee of 4,593,170
shares of capital stock of Nanologix, Inc./Infectech, Inc to the Licensor.
These
aforementioned provisions in accordance with Section 13.19
being
met, this Agreement shall be effective as of the date recited on page one.
However, if any of the stipulations specified herein in Section 13.19
are not
met within 60 (sixty) days of the Parties signing this Agreement, this Agreement
will be declared null and void without penalty to either Party. Signatures
of the parties transmitted by facsimile shall be deemed to be their original
signatures for all purposes.
13
13.20 Licensee
Able to Perform.
Licensee
has had
full disclosure and had opportunity to do due diligence to the extent it
determined to be necessary and reasonable in regard to the Licensor’s patent
base, products, technology, and business. Licensee is familiar with Licensor's
efforts and difficulties concerning said business and Licensee acknowledges
that
Licensor has made no representation as to the operation of said business other
than is contained herein. Licensee represents that it is capable of
manufacturing the Licensed Products, and is aware of the difficulties inherent
in the regulatory aspects, manufacturing, sale and distribution of a the
licensed products and that it has sufficient and adequate marketing staff,
sales
staff, sales administration and customer service staff, forecasting, packaging
development and electronic data interchange capability sufficient to sell the
Licensed Products and Products derived from the Licensed Technology and/or
Licensed Patents. Licensee acknowledges that Licensor shall have no liability
in
regard to Licensee's success or failure of the anticipated sales or Sublicense
contemplated by the subject license.
13.21 Amendment
of Agreement.
None
of
the terms, conditions or provisions of this Agreement shall be held to have
been
changed, waived, varied, modified or altered by any act or knowledge of either
party hereto, their respective agents servants or employees
unless done so in writing signed by both parties hereto.
13.22 Confidentiality.
Except
as otherwise agreed in writing, Licensee shall not appropriate, use or disclose,
directly or indirectly, for its own benefit or otherwise, any information,
materials, trade secrets, documents, correspondence, or other tangible or
intangible property of Licensor, to which it shall have obtained access
hereunder or in contemplation of this Agreement, or which shall otherwise in
any
way relate to the Licensor's IP or the subject matter of this Agreement, which
has not been publicly disclosed prior thereto. Any of the aforesaid which is
or
comes into the possession of Licensee shall be held IN TRUST for Licensor and
remain the sole and exclusive property of Licensor, subject to the rights of
License by Licensee as provided herein.
The
provisions of this Paragraph shall survive the termination of this Agreement.
Further, the parties agree that there do not exist adequate remedies at law
for
a violation of this Paragraph and therefore, in addition to monetary and other
damages, which may be recovered for a breach hereof that Licensor shall be
entitled to and may obtain injunctive and other equitable and extraordinary
relief and remedies for any such breach.
13.23 Bankruptcy. All
rights and licenses granted to Licensee under or pursuant to this Agreement,
under any section of this Agreement, are and shall otherwise be deemed to
be, for purposes of Section 365(n) of the U.S. Bankruptcy Code, licenses of
rights to “intellectual property” as defined in the Bankruptcy Code. The
Parties agree that Licensee, as the licensee of such rights under this
Agreement, shall retain and may fully exercise all of its rights limited to
the
Field of Use, as defined in this Agreement, under the Bankruptcy Code, and
that
Licensor shall retain all of its rights under the Bankruptcy Code. The Parties
further agree that, in the event of the commencement of bankruptcy proceedings
by or against Licensor under the Bankruptcy Code, Licensee shall be entitled
to
retain all of its rights under Section 3.1 of this Agreement. Licensor shall
have the right to terminate this Agreement upon the occurrence of Licensee
making an assignment for the benefit of its creditors, or if Licensee becomes
the subject of insolvency or conservator proceedings, or as provided under
the
provisions of Article 9.
14
13.24 Public
Statements. The
Parties shall, in good faith, coordinate with each other before issuing any
press release or otherwise making any public statements with respect to this
Agreement or the transactions contemplated by this Agreement. Said
coordination shall consist of 24 hours prior notice to all Parties of all press
releases or public statements related, directly or indirectly, to this
Agreement, or
which
mentions the other Party, except where the time period includes a Saturday
or
Sunday, in which case the time period shall be extended to 48 hours.
Further, the Parties agree to work in mutual cooperation, and to consider,
in
good faith, the responses of the other Party, with respect to the language
and timing of the statements.
13.25 Insurance.
Assignee
agrees to add, or have added, Assignor as an additional insured to all products
liability insurance policies related to the Licensed Products, Licensed Patents,
and Licensed Technology, and to maintain them as such throughout the course
of
this Agreement. Assignee further agrees to provide Assignor with evidence of
said coverage upon reasonable request and to provide Assignor with reasonable
notice of any changes regarding its status on said policies.
13.26
Licensee
agrees to notify Licensor immediately and in writing of all circumstances
surrounding the unauthorized possession or use of the
Licensed
Patents, Licensed Products, Licensed Technology, or Licensor’s trade secrets by
any Person. Licensee agrees to cooperate fully with Licensor in any litigation
relating to or arising from such unauthorized possession or use.
13.27 This
Agreement embodies the entire understanding of the parties and shall supersede
all previous communications, representations or understandings, either oral
or
written, between the parties relating to the subject matter hereof.
IN
WITNESS WHEREOF, the Parties hereto have caused this Agreement to be executed
by
their duly authorized representatives as of the Effective Date.
|
NANOLOGIX,
INC.
|
|||
|
By:
|
By:
|
||
|
Print
Name:
|
Print
Name:
|
||
|
Title:
|
Title:
|
15
EXHIBIT
A
Licensed
Patents
| 1. |
Licensed
Patents.
|
|
U.S.
Patent Nos.
|
Description
|
||
|
#5,962,306
|
Method
of determining the presence or absence of a nonparaffinophilic
microorganism in a specimen and an associated apparatus
|
||
|
#5,891,662
|
Method
for determining the antimicrobial agent sensitivity of a
nonparaffinophilic hydrophobic microorganism
|
||
|
#5,882,919
|
Apparatus
for determining the presence or absence of a nonparaffinophilic
microorganism in a specimen
|
||
|
#5,854,013
|
Method
of determining presence or absence of a nonparaffinophilic microorganism
in a specimen
|
||
|
#5,804,406
|
Determining
sensitivity of paraffinophilic microorganisms to
antimicrobials
|
||
|
#5,801,009
|
Method
for determining the antimicrobial sensitivity of a paraffinophilic
microorganism using various milieus and an associated
apparatus
|
||
|
#5,750,363
|
Method
for determining the antibiotic agent sensitivity of a nonparaffinophilic
microorganism and an associated apparatus
|
||
|
#5,726,030
|
Method
for automatically testing the antibiotic sensitivity of a
nonparaffinophilic microorganism
|
||
|
#5,721,112
|
Method
of determining the presence or absence of a nonparaffinophilic
microorganism in a specimen and an associated apparatus
|
||
|
#5,707,824
|
Method
of determining the presence or absence of a paraffinophilic
microorganism
|
||
|
#5,698,414
|
Method
and apparatus for testing paraffinophilic microorganisms for antimicrobial
agent sensitivity
|
||
|
#5,677,169
|
Method
for determining the antimicrobial agent sensitivity of a
nonparaffinophilic microorganism and an associated
apparatus
|
||
|
#5,668,010
|
Method
for determining the antimicrobial agent sensitivity of a
nonparaffinophilic microorganism using various milieus and an associated
apparatus
|
||
|
#5,663,056
|
Method
for determining the antimicrobial agent sensitivity of a
nonparaffinophilic microorganism and an associated
apparatus
|
||
|
#5,654,194
|
Method
of identifying a nonparaffinophilic microrganism using various milieus
and
an associated apparatus
|
||
|
#5,641,645
|
Method
for determining the antimicrobial agent sensitivity of a
nonparaffinophilic microrganism using various milieus and an associated
apparatus
|
||
|
#5,639,675
|
Method
of identifying a nonparaffinophilic microorganism using various mileus
and
an associated apparatus
|
||
|
#5,637,501
|
Apparatus
for automatically testing the antibiotic sensitivity of a paraffinophilic
microorganism
|
||
16
EXHIBIT
B
Licensed
Products
Medical
diagnostic kits, including all components, for the detection and identification
of over 32 different paraffin-eating and non-paraffin-eating microorganisms
to
be Licensed by the Licensee limited only for use in the Field of Use, defined
in
the Agreement herein, for the human and veterinary identification of Atypical
Mycobacteria, Tuberculosis, Mycobacterium Avium Intracellulare (MAI),
Mycobacteria Paratuberculosis, Nocardia and Pseudomonas for disease
identification and antimicrobial agent sensitivity assaying in
the
health field which may result in drug discovery applications, and excludes
any
other products, uses and any other kits (health or otherwise), as these uses
or
kits are specifically reserved to Licensor.
Buffer
Products, including
certain
of Licensor’s
products utilizing Licensor’s trade secrets, named the AFZ Buffer (for
use
in the rapid lysis of bacterial cell cultures), and
the
Adaptor Buffer (enables
the user of this product to easily adapt their existing Plasmid DNA Isolating
Column Systems into Genomic DNA Isolating Column Systems).
17
Exhibit
C
Patents
Not to be Licensed to Licensee Under This Agreement
Unless
listed explicitly on Exhibit A as a Licensed Patent, all of Licensors Patents,
and pending applications for letters patent, including without limitation any
provisional, converted provisional, continued prosecution
application,
continuation, divisional or continuation-in-part
are
excluded from the license by or use of the Licensee.
18