Exhibit 10.4
LICENSE AGREEMENT
BETWEEN:
THE UNIVERSITY OF BRITISH COLUMBIA, a corporation continued
under the UNIVERSITY ACT of British Columbia with its
administrative offices at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇
("UBC")
AND:
MIV THERAPEUTICS, INC., a corporation incorporated under the
laws of the State of Nevada, with an office at ▇▇▇▇ #▇, ▇▇▇▇
▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇
(the "LICENSEE")
WHEREAS:
A. UBC has been engaged in research during the course of which it has invented,
developed and/or acquired certain technology relating to Thin HA Coating, which
research was undertaken by ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ (the "INVESTIGATOR") in the
Department of Metals and Materials Engineering at UBC;
B. It is UBC's objective to exploit its technology for the public benefit, and
to generate further research in a manner consistent with its status as a
non-profit, tax exempt educational institution; and
C. The Licensee and UBC have agreed to enter into this license on the terms and
conditions set out in this agreement (the "AGREEMENT").
THE PARTIES AGREE AS FOLLOWS:
1.0 DEFINITIONS:
1.1 In this Agreement, unless a contrary intention appears, the following words
and phrases shall have the following meaning:
(a) "ACCOUNTING" means an accounting statement setting out in
detail how the amount of Revenue was determined;
(b) "AFFILIATED COMPANY" or "AFFILIATED COMPANIES" means two or
more corporations where the relationship between them is one
in which one of them is a subsidiary of the other, or both are
subsidiaries of the same corporation, or fifty percent (50%)
of the voting shares of each of them is owned or controlled by
the same person, corporation or other legal entity;
(c) "APPROVAL FOR SALE": means approval by the FDA (or any other
equivalent regulatory authority outside the U.S.) of the
marketing of a Product;
(d) "CONFIDENTIAL INFORMATION" means all information, regardless
of its form:
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(i) designated by UBC as confidential, whether orally or
in writing, including, without limitation, all
information related to the Technology (including all
derived analyses and conclusions) and the terms and
conditions of this Agreement; and
(ii) disclosed by UBC to the Licensee, or of which the
Licensee becomes aware, whether before or after the
Start Date;
or
(iii) disclosed by the Licensee to UBC and which is clearly
identified in writing as "Confidential";
except that "Confidential Information" does not include
information:
(iv) possessed by the recipient (the "RECIPIENT") prior to
receipt from the disclosing party (the "Discloser"),
other than through prior disclosure by the Discloser,
as evidenced by the Recipient's business records;
(v) published or available to the general public
otherwise than through a breach of this Agreement;
(vi) obtained by the Recipient from a third party with a
valid right to disclose it; provided that the third
party is not under a confidentiality obligation to
the Discloser; or
(vii) independently developed by employees, agents or
consultants of the Recipient who had no knowledge of
or access to the Discloser's information as evidenced
by the Recipient's business records;
(e) "EFFECTIVE TERMINATION DATE" means the date on which this
Agreement is terminated under Article 18;
(f) "FDA" means the United States Food and Drug Administration;
(g) "FIELD OF USE" means the Technology and any Improvements will
be used to produce hydroxyapatite and related calcium
phosphate compounds on medical devices and on scaffolding,
wherein "scaffolding" means stents, gauze, wires, wire mesh,
films or microscale particles. For greater certainty, the
Field of Use shall not include any use of the Technology or
Improvements to produce hydroxyapatite and related calcium
phosphate compounds on or for orthopaedic implantables, trauma
fixation devices, dental implants and bone substitutes;
(h) "FIRST USE OF THE TECHNOLOGY" means the earlier of either:
(i) the first use of the Technology or any Improvement in
exchange for valuable consideration;
(ii) the first Approval for Sale of a Product; or
(iii) the first clinical trial involving the use of the
Technology or any Improvements;
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(i) "IMPROVEMENTS" means any improvements, variations, updates,
modifications and enhancements made, invented and/or acquired
by either UBC or the Licensee or any sublicensees of the
Licensee, together with their respective employees, servants,
agents and subcontractors, directly relating to the Technology
within the Field of Use at any time after the Start Date,
whether patentable or not;
(j) "PATENT(S)" means, collectively, the patents and patent
applications listed in Schedule "A", (including any patents or
patent applications that may be added to Schedule "A" from
time to time), and any counterparts, re-examinations,
continuations, continuation-in-part, extensions, term
restorations, renewals, divisionals, reissues, corresponding
international patent applications, including supplementary
protection certificates, or other administrative protections,
and any patents resulting therefrom. For greater clarity, it
is confirmed that the patents and patent applications as
herein defined shall include any and all patents or patent
applications arising from, or relating to, Improvements, which
patents or patent applications shall be added to Schedule "A";
(k) "PHASE II TRIAL" means that portion of the clinical
development program that provides for additional assessment of
safety and preliminary assessment of efficacy at particular
dosage levels of a Product in human volunteers or patients,
which is intended to gather information to support further
human clinical trials;
(l) "PHASE III TRIAL" means that portion of the clinical
development program that provides for human clinical trials,
performed after preliminary evidence suggesting dose and
effectiveness of a Product has been obtained, which is
intended to gather the additional information about the
effectiveness and safety that is needed to evaluate the
overall benefit-risk relationship of a Product;
(m) "PRODUCT(S)" means goods or services manufactured or provided
in connection with the use of all or some of the Technology
and/or any Improvements within the Field of Use;
(n) "REVENUE": means any and all revenues, receipts, monies and
the fair market value of any shares or other securities and
all other consideration directly or indirectly collected or
received, whether by way of cash, credit or other value,
received by the Licensee (but not including monies collected
from any sublicensee of the Licensee), from the marketing,
manufacturing, sale or distribution of the Technology and any
Improvements, and/or any Products, less direct sales taxes and
customs duties applied on the sales of Products;
(o) "ROYALTY DUE DATES": means the last working day of March,
June, September and December of each year during the term of
this Agreement;
(p) "START DATE" means this Agreement will be deemed to have come
into force on the Start Date which shall be February 1, 2003,
and shall be read and construed accordingly;
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(q) "SUBLICENSING REVENUE": means any and all revenues, receipts,
monies and the fair market value of any shares or other
securities and all other consideration directly or indirectly
collected or received, whether by way of cash, credit or other
value received by the Licensee, pursuant to each sublicense
agreement relating to the Technology and any Improvements,
and/or any Products. For greater clarity, it is confirmed that
Sublicensing Revenue will include:
(i) all milestone payments, royalties and license fees;
and
(ii) all research or development fees in excess of the
direct reimbursement for the actual costs of such
research and development incurred by the Licensee
pursuant to a written research plan and agreement;
received by the Licensee from any sublicensee relating to the
Technology, Improvements or any Products;
(r) "TECHNOLOGY": means the Patents any and all knowledge,
know-how and/or technique or techniques invented, developed
and/or acquired within the Field of Use before the Start Date
by UBC or the Licensee relating to, and including, the
technology described in Schedule "A" of this Agreement hereto
and the materials described in Schedule "B" of this Agreement,
each as amended from time to time, including, without
limitation, all related research, data, specifications,
instructions, manuals, papers or other related materials of
any nature whatsoever, whether written or otherwise, and UBC's
Confidential Information relating to the same; and
(s) "UBC TRADE-MARKS": means any ▇▇▇▇, trade-▇▇▇▇, service ▇▇▇▇,
logo, insignia, seal, design, symbol or device used by UBC in
any manner whatsoever.
2.0 PROPERTY RIGHTS IN AND TO THE TECHNOLOGY:
2.1 The Licensee acknowledges and agrees that UBC owns any and all right, title
and interest in and to the Technology and all Improvements.
2.2 The Licensee will, at the request of UBC, sign all documents as may be
required to ensure that ownership of the Technology and any Improvements remains
with UBC.
2.3 On the last working day of June and December of each year during the term of
this Agreement the Licensee will give notice to UBC of the details of all
Improvements which the Licensee and any sublicensees of the Licensee has have
developed and/or acquired during the previous six month period.
3.0 GRANT OF LICENSE:
3.1 Subject to Article 3.4, UBC grants to the Licensee an exclusive worldwide
license to use and sublicense the Technology and any Improvements within the
Field of Use and to manufacture, distribute and sell the Products within the
Field of Use on the terms and conditions set out in this Agreement.
3.2 The license granted under this Agreement is granted only to the Licensee and
not to any Affiliated Companies.
3.3 The Licensee will not cross-license the Technology or any Improvements
without the prior written consent of UBC.
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3.4 The Licensee acknowledges and agrees that UBC may use the Technology and any
Improvements without charge in any manner at all for research, scholarly
publication, educational and all other non-commercial uses.
3.5 UBC may register a financing statement regarding this Agreement under the
PERSONAL PROPERTY SECURITY ACT of British Columbia, the Uniform Commercial Code
of the United States and/or under similar legislation in those jurisdictions in
which the Licensee carries on business and/or has its chief place of business.
The Licensee will pay for all costs associated with such registrations.
3.6 The Licensee will give notice to UBC if it is carrying on business and/or
locates its chief place of business in a jurisdiction outside British Columbia
before starting business in that other jurisdiction. If UBC has registered a
financing statement under Article 3.5, the Licensee will file, within 15
business days of any change in jurisdiction, the appropriate documents in the
Personal Property Registries or similar registries outside of British Columbia
to document the change in jurisdiction and will provide UBC with a copy of the
verification statement regarding each filing within 15 business days after
receiving the verification statement. The Licensee will pay for all costs
associated with the registrations under this Article 3.6.
4.0 SUBLICENSING:
4.1 The Licensee will have the right to grant sublicenses of the Technology and
any Improvements to Affiliated Companies and other third parties with the prior
written consent of UBC, such consent not to be unreasonably withheld. After
obtaining UBC's consent the Licensee will provide UBC with a signed copy of each
sublicense granted within 30 calendar days of it being signed by all parties to
the sublicense.
4.2 Any sublicense granted by the Licensee will be granted only
to the sublicensee and cannot be assigned or further sub-sublicensed without the
prior written consent of UBC. All sublicenses must contain covenants by each
sublicensee to observe and perform terms and conditions similar to those
contained in this Agreement.
4.3 Before executing a sublicense the Licensee will give notice to UBC of the
jurisdictions in which the applicable sublicensee is carrying on business. If
the Licensee, during the term of the sublicense, becomes aware of the
sublicensee carrying on business in another jurisdiction, then the Licensee will
give notice to UBC within five calendar days. If UBC has registered a financing
statement under Article 3.5 the Licensee will, immediately after executing the
sublicense, register a financing change statement under the PERSONAL PROPERTY
SECURITY ACT of British Columbia, the Uniform Commercial Code of the United
States and/or any similar legislation in those jurisdictions in which each
sublicensee carries on business and has its chief place of business to add each
sublicensee to the registration referred to in Article 3.5, and will provide UBC
with a copy of the verification statement within 15 calendar days after
receiving the verification statement. If any sublicensee changes the
jurisdiction within which it is carrying on business and/or the location of its
chief place of business, the Licensee will file the appropriate documents in the
Personal Property Registries or similar registries within or outside of Canada
to document the changes in jurisdiction. The Licensee will pay for all costs
associated with the filings under this Article 4.3.
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5.0 ROYALTIES:
5.1 In consideration of the license granted under this Agreement, the Licensee
will pay to UBC a royalty of 2.5% of the Revenue. With respect to Sublicensing
Revenue, the Licensee shall pay to UBC the following:
(a) for sublicensee products incorporating the Technology and/or
any Improvements, the Licensee shall pay ten percent (10%) of
Sublicensing Revenue; and
(b) for sublicensee products incorporating (i) the Technology
and/or any Improvements and (ii) any other UBC technology
(including certain technology known as UILO #00-126 relating
to Porous HA Coating (the "POROUS HA COATING TECHNOLOGY") to
which UBC has granted to the Licensee the right to use such
UBC technology, the Licensee shall pay a total of fifteen
percent (15%) of Sublicensing Revenue.
For the purposes of Article 6.1, the royalties payable under this Article 5.1
are referred to as "earned royalties".
5.2 The earned royalty is due and payable within 30 calendar days of each
respective Royalty Due Date and is to be calculated with respect to the Revenue
and the Sublicensing Revenue in the three month period immediately before the
applicable Royalty Due Date.
5.3 All earned royalties paid by the Licensee to UBC under this Agreement will
be in Canadian dollars without any reduction or deduction of any nature or kind
at all. If the Licensee receives any Revenue or Sublicensing Revenue in a
currency other than Canadian dollars, the currency will be converted to the
equivalent in Canadian dollars on the date that any amount is payable to UBC, at
the rate of exchange set by the Bank of Montreal for buying that currency at its
principal branch in Vancouver, British Columbia. The amount of Canadian dollars
resulting from the conversion is to be included in Revenue or Sublicensing
Revenue.
5.4 Products are to be deemed to have been sold by the Licensee and included in
the Revenue when invoiced, delivered, shipped or paid for, whichever is the
first. The Licensee is deemed to receive Sublicensing Revenue when the
consideration is received from the sublicensee.
5.5 Any transaction, disposition or other dealing involving all or part of the
Technology or any Improvements or Products between the Licensee and another
person (including any sublicensee of the Licensee) that is not made at fair
market value is deemed to have been made at fair market value, and the fair
market value of the transaction, disposition or other dealing will be added to
and deemed part of the Revenue or the Sublicensing Revenue, as the case may be,
and will be included in the calculation of earned royalties under this
Agreement.
6.0 MINIMUM ANNUAL ROYALTIES, ANNUAL MAINTENANCE FEE, MILESTONE PAYMENTS &
EQUITY:
6.1 MINIMUM ANNUAL ROYALTIES. The Licensee shall pay to UBC minimum annual
royalties in accordance with the following schedule:
(a) On the first anniversary of the first Approval for Sale:
CDN$5,000.00;
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(b) On the second anniversary of the first Approval for Sale:
CDN$12,500.00; and
(c) On the third anniversary of the first Approval for Sale and
every anniversary thereafter for the term of this Agreement:
CDN$20,000.00.
This payment will not be refunded to the Licensee (in whole or in part) under
any circumstances, except that the difference between the minimum annual royalty
and the earned royalties payable under Article 5.1 in the same year will be
credited against future earned royalties on each successive Royalty Due Date.
6.2 ANNUAL MAINTENANCE FEE. The Licensee will pay to UBC, in addition to all
other amounts due under this Agreement, an annual maintenance fee of
CDN$1,000.00 (the "ANNUAL MAINTENANCE FEE"). The Annual Maintenance Fee is
payable on or before February 1st of each year during the term of this
Agreement, starting on February 1st, 2003, and will not be refunded to the
Licensee (in whole or in part) under any circumstances. The Annual Maintenance
Fee is separate and distinct from any payments required under Articles 5.0 or
6.1.
6.3 MILESTONE PAYMENTS. The Licensee shall pay to UBC the following milestone
payments:
(a) In the case where the Technology and/or any Improvements is
incorporated into a Product, which Product must not undergo
Phase I, II and III Trials:
(i) for each of the first two Products incorporating the
Technology and/or any Improvements:
(A) on proof of efficacy in two animal models:
CDN$15,000.00 (per Product);
(B) on initial Approval for Sale in the first
regulatory jurisdiction:
CDN$25,000.00 (per Product); and
(C) on each subsequent Approval for Sale in each
additional jurisdiction:
CDN$15,000.00 (per Product); and
(ii) for each of the third and all subsequent Products
incorporating the Technology and/or any Improvements:
(A) on proof of efficacy in two animal models:
CDN$12,500.00;
(B) on initial Approval for Sale in the first
regulatory jurisdiction: CDN$25,000.00; and
(C) on each subsequent Approval for Sale in each
additional jurisdiction: CDN$7,500.00; or
(b) in the case where the Technology is combined with a
pharmaceutical licensed by the Licensee from a third party or
otherwise developed or acquired by the Licensee to produce a
coating for a Product which must undergo Phase I, II and III
Trials:
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(i) for each of the first two Products incorporating the
Technology and/or any Improvements:
(A) on start of Phase II Trials:
CDN$10,000.00 (per Product);
(B) on start of Phase III Trials:
CDN$25,000.00 (per Product); and
(C) on notification of Approval for Sale of the
Product: CDN$200,000.00 (per Product); and
(ii) for each of the third and all subsequent Products
incorporating the Technology and/or any Improvement:
(A) on entering Phase II Trials:
CDN$5,000.00 (per Product);
(B) on entering Phase III Trials:
CDN$12,500.00 (per Product); and
(C) on notification of Approval for Sale of the
Product: CDN$100,000.00 (per Product).
6.4 The milestone payments due pursuant to Articles 6.3 above shall be due and
payable if such milestones are met or achieved by the Licensee, a permitted
Affiliate of the Licensee, any sublicensee of the Licensee or any other party
who has obtained any rights to the Technology or any Improvements through the
Licensee.
6.5 EQUITY. As part of the consideration of the rights granted by UBC to the
Licensee hereunder the Licensee shall deliver, within ten calendar days of the
execution of this Agreement, and in lieu of an initial license fee, to UBC
500,000 common voting shares in the capital of the Licensee (the "SHARES"). The
Shares shall in all material respects have special rights and restrictions
identical to (or in all material respects, no less favourable than) the special
rights and restrictions attached to any shares issued by the Licensee to its
founders and/or any shares or other securities issued to other investors or
purchasers subsequent to the execution of this Agreement.
6.6 The Licensee will use its reasonable commercial efforts to cause all of the
Shares to be issued free from any pooling, escrow or other trading restrictions
placed on such Shares by the Licensee or any regulatory authority having
jurisdiction over the Licensee. The Licensee acknowledges and agrees that UBC
shall have the right to transfer any or all of the Shares to a company or
society of which UBC is the sole shareholder, in the case of a company, or of
which UBC controls the membership, in the case of a society, and the Licensee
shall take all steps or do such acts as may be reasonably required to allow such
transfer.
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6.7 The Licensee acknowledges and agrees that it will comply with all applicable
laws and legislation with respect to the issuance and legending of the Shares
and, in particular, however, without limitation, all U.S. and British Columbia
resale restrictions applicable thereto. Without limiting the foregoing, if the
Licensee files at any time a registration statement or prospectus with the
Securities and Exchange Commission in the United States, the Licensee will, to
the fullest extent permitted by applicable securities laws, include the
registration of the Shares under such securities registration or prospectus if
and to the same extent as the Licensee registers the shares of any of its other
shareholders holding the same class of shares as the University.
6.8 The Shares shall be deemed to be fully paid for as of the date of issuance
and shall be the absolute property of UBC. Neither all nor any portion of the
Shares shall be refundable to the Licensee under any circumstances.
6.9 Until the Licensee becomes a reporting issuer for equity securities under
the SECURITIES ACT of British Columbia, or under the applicable securities
legislation in any other jurisdiction which has jurisdiction over the issuance
of shares by the Licensee:
(a) the Licensee shall provide to UBC, within 45 calendar days
after the last day of each quarter, financial statements,
including a balance sheet and a statement of income as of the
last date of each such quarter, a cumulative statement of
income from the first day of the then current year to the last
day of such quarter and a cumulative cash flow analysis from
the first day of the then current year to the last day of the
then current year;
(b) the Licensee shall provide to UBC, within 120 calendar days
after the end of each fiscal year of the Licensee, audited
financial statements prepared pursuant to a review of
engagement by a reputable accounting firm; and
(c) the Licensee shall provide to UBC, at least 45 calendar days
prior to the beginning of each fiscal year of the Licensee, an
operating plan with monthly and quarterly financial breakdowns
for such fiscal year.
7.0 PATENTS:
7.1 UBC will own and manage all Patents, including any Patents for Improvements.
The Licensee may identify any process, use or products arising out of the
Technology and any Improvements that may be patentable and UBC will, on the
request of the Licensee, take all reasonable steps to apply for a Patent in the
name of UBC provided that the Licensee pays all costs of applying for,
registering and maintaining the Patent in the jurisdictions in which the
Licensee designates that a Patent is required. Within two calendar days of the
execution of this Agreement the Licensee shall reimburse UBC the amount of CDN.
$13,938.26 representing the Patent costs incurred by UBC to the date of
execution of this Agreement. The Licensee will, on UBC's request, pay to UBC a
reasonable payment as an advance against expected Patent expenses.
7.2 On the issuance of a Patent obtained under Article 7.1 the Licensee will
become the licensee of the Patent on the terms and conditions set out in this
Agreement.
7.3 UBC will invoice all Patent costs to the Licensee on a quarterly
basis commencing on the first quarter following the Start Date, and the Licensee
shall, within 30 calendar days of the presentation of receipts and/or invoices
from UBC, reimburse UBC for the balance of all costs incurred to date regarding
any Patents or Patent applications relating to the Technology and any
Improvements licensed under this Agreement.
7.4 The Licensee will not contest the validity or scope of any Patents relating
to the Technology and any Improvements licensed under this Agreement.
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7.5 The Licensee will ensure proper patent marking for all uses of the
Technology and any Improvements licensed under this Agreement and will clearly
▇▇▇▇ the appropriate Patent numbers on any Products made using the Technology
and any Improvements.
8.0 DISCLAIMER OF WARRANTY:
8.1 UBC makes no representations, conditions or warranties, either express or
implied, regarding the Technology or any Improvements or the Products. Without
limitation, UBC specifically disclaims any implied warranty, condition or
representation that the Technology or any Improvements or the Products:
(a) will correspond with a particular description;
(b) are of merchantable quality;
(c) are fit for a particular purpose; or
(d) are durable for a reasonable period of time.
UBC is not liable for any loss, whether direct, consequential, incidental or
special, which the Licensee or other third parties suffer arising from any
defect, error or fault of the Technology or any Improvements or Products, or
their failure to perform, even if UBC has been advised of the possibility of the
defect, error, fault or failure. The Licensee acknowledges that it has been
advised by UBC to undertake its own due diligence regarding the Technology and
any Improvements.
8.2 Nothing in this Agreement:
(a) constitutes a warranty or representation by UBC as to title to
the Technology and/or any Improvement or that anything made,
used, sold or otherwise disposed of under the license granted
in this Agreement is or will be free from any infringement of
patents, copyrights, trade-marks, industrial design or other
intellectual property rights; or
(b) imposes an obligation on UBC to bring, prosecute or defend
actions or suits against third parties for infringement of
patents, copyrights, trade-marks, industrial designs or other
intellectual property or contractual rights.
8.3 Notwithstanding Article 8.2, if there is an alleged infringement of the
Technology or any Improvements or any right with respect to the Technology or
any Improvements, the Licensee may, on receiving the prior written consent of
UBC, prosecute litigation designed to enjoin infringers of the Technology or any
Improvements. Provided that it has first granted its prior written consent, UBC
agrees to reasonably co-operate to the extent of signing all necessary documents
and to vest in the Licensee the right to institute the litigation; provided that
all the direct and indirect costs and expenses of bringing and conducting the
litigation or settlement are paid by the Licensee and, in this case, all
recoveries are and will enure for the benefit of the Licensee.
8.4 If any complaint alleging infringement of any Patent or other proprietary
rights is made against the Licensee or a sublicensee of the Licensee regarding
the use of the Technology or any Improvements or the manufacture, use or sale of
the Products, the following procedure will be adopted:
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(a) the Licensee will promptly notify UBC on receipt of the
complaint and will keep UBC fully informed of the actions and
positions taken by the complainant and taken or proposed to be
taken by the Licensee on behalf of itself or a sublicensee;
(b) except as provided in Article 8.4(d), all costs and expenses
incurred by the Licensee or any sublicensee of the Licensee in
investigating, resisting, litigating and settling the
complaint, including the payment of any award of damages
and/or costs to any third party, will be paid by the Licensee
or any sublicensee of the Licensee, as the case may be;
(c) no decision or action concerning or governing any final
disposition of the complaint will be taken without full
consultation with, and approval by, UBC, such approval not to
be unreasonably withheld;
(d) UBC may elect to participate as a party in any litigation
involving the complaint to the extent that the court may
permit, but any additional expenses generated by such
participation will be paid by UBC (subject to the possibility
of recovery of some or all of the additional expenses from the
complainant);
(e) notwithstanding Article 8.2, if the complainant is willing to
accept an offer of settlement and one of the parties to this
Agreement is willing and able to make or accept the offer and
the other is not, then the unwilling party will conduct all
further proceedings at its own expense and is responsible for
the full amount of any damages, costs, accounting of profits
and settlement costs in excess of those provided in the offer;
but is entitled to retain for itself the benefit of any
litigated or settled result giving a lower payment of costs,
damages, accounting of profits and settlement costs than that
provided in the offer; and
(f) the Licensee will pay all royalties payable under this
Agreement to UBC in trust from the date UBC receives notice of
the complaint and until a resolution of the complaint has been
finalized. If the complainant is successful, then the
royalties paid to UBC in trust under this Article 8.4(f) will
be returned to the Licensee; provided that the amount being
returned to the Licensee is no more than the amount paid by
the Licensee to the complainant in the settlement or other
disposition of the complaint. If the complainant does not
succeed then UBC retains all royalties paid to it under this
Article 8.4(f).
9.0 INDEMNITY AND LIMITATION OF LIABILITY:
9.1 The Licensee indemnifies, holds harmless and defends UBC, its Board of
Governors, officers, employees, faculty, students, invitees and agents against
any and all claims (including all associated legal fees and disbursements
actually incurred) arising out of the exercise of any rights under this
Agreement and including, without limitation, against any damages or losses,
consequential or otherwise, arising in any manner at all from or out of the use
of the Technology or any Improvements or Products licensed under this Agreement
by the Licensee or its sublicensees or their customers or end-users.
9.2 Subject to Article 9.3, UBC's total liability, whether under the express or
implied terms of this Agreement, in tort (including negligence) or at common
law, for any loss or damage suffered by the Licensee, whether direct, indirect
or special, or any other similar damage that may arise or does arise from any
breaches of this Agreement by UBC, its Board of Governors, officers, employees,
faculty, students or agents, is limited to the amount of CDN$5,000.00.
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9.3 The Licensee acknowledges and agrees that UBC will not be liable for
consequential or incidental damages arising from any breach or breaches of this
Agreement.
9.4 Notwithstanding the termination or expiry of this Agreement, the obligations
set out in this Article 9.0 will survive and continue to bind the Licensee and
its successors and assigns.
10.0 PUBLICATION AND CONFIDENTIALITY:
10.1 Each party will keep and use the other party's Confidential Information in
confidence and will not, without the other party's prior written consent,
disclose the other party's Confidential Information to any person or entity,
except to the party's directors, officers, employees, faculty, students and
professional advisors who require the Confidential Information to assist such
party in performing its obligations under this Agreement. The Licensee will
maintain an appropriate internal program limiting the distribution of UBC's
Confidential Information to only those officers, employees and professional
advisors who require such Confidential Information in performing the Licensee's
obligations under this Agreement and will enter into appropriate non-disclosure
agreements as a consequence thereof; such final form of proposed non-disclosure
agreements to be approved by the Licensee's board of directors from time to
time.
10.2 Any party required by judicial or administrative process to disclose the
other party's Confidential Information will promptly notify the other party and
allow it reasonable time to oppose the process before disclosing the
Confidential Information.
10.3 UBC is not restricted from presenting at symposia, national or regional
professional meetings, or from publishing in journals or other publications,
accounts of its research relating to the Technology and any Improvements;
provided that, with respect to the Confidential Information only, the Licensee
is provided with copies of the proposed disclosure at least 60 calendar days
before the presentation or publication date and does not, within 30 calendar
days after delivery of the proposed disclosure, give notice to UBC indicating
that it objects to the proposed disclosure. Any objection to a proposed
disclosure will specify the portions of the proposed disclosure considered
objectionable (the "OBJECTIONABLE MATERIAL"). On receiving notice from the
Licensee that any proposed disclosure contains Objectionable Material, UBC and
the Licensee agree to work together to revise the proposed disclosure to remove
or alter the Objectionable Material in a manner acceptable to both the Licensee
and UBC, in which case the Licensee will withdraw its objection. UBC is not
restricted from publishing or presenting the proposed disclosure as long as the
Objectionable Material has been removed. Any Objectionable Material will not be
disclosed for six months from the date UBC delivered the proposed disclosure to
the Licensee. After six months from the date UBC delivered the proposed
disclosure to the Licensee UBC is free to present and/or publish the proposed
disclosure whether or not it contains Objectionable Material.
10.4 The Licensee requires of UBC, and to the extent permitted by law UBC
agrees, that this Agreement, and each part of it, is confidential and will not
be disclosed to third parties, as the Licensee claims that the disclosure would
or could reveal commercial, scientific or technical information which would
significantly harm the Licensee's competitive position and/or interfere with the
Licensee's negotiations with prospective sublicensees. Notwithstanding anything
contained in this Article 10.0, the Licensee acknowledges and agrees that UBC
may identify the title of this Agreement, the parties to this Agreement and the
names of the inventors of the Technology and any Improvements.
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10.5 Notwithstanding the termination or expiry of this Agreement, the
obligations set out in this Article 10.0 survive and continue to bind the
parties, their successors and assigns.
11.0 PRODUCTION AND MARKETING:
11.1 Except as required by law, the Licensee will not use the UBC Trade-marks or
make reference to UBC or its name in any advertising or publicity without the
prior written consent of UBC, such consent not to be unreasonably withheld.
Without limitation, and except as required by law, the Licensee will not issue a
press release regarding this Agreement or the Technology or any Improvements
without first obtaining UBC's written approval, such approval not to be
unreasonably withheld. If the Licensee is required by law to act in breach of
this Article, the Licensee will provide UBC with sufficient prior notice to
permit UBC to bring an application or other proceeding to contest the
requirement.
11.2 The Licensee represents and warrants to UBC that it has the infrastructure,
expertise and resources to:
(a) develop and commercialize the Technology and any Improvements;
(b) track and monitor on an ongoing basis performance under the
terms of each sublicense entered into by the Licensee;
(c) monitor on a world wide basis patent infringement regarding
any Patent relating to the Technology and any Improvements
licensed under this Agreement; and
(d) handle the Technology and any Improvements with care and
without danger to the Licensee, its employees, agents or the
public.
11.3 The Licensee represents and warrants to UBC that it will, throughout the
term of this Agreement:
(a) allocate to the development and commercialization of the
Technology and any Improvements at least the same degree of
diligence, expertise, infrastructure, and resources as the
Licensee is allocating to the most favoured Product developed
and marketed by the Licensee; and
(b) use its reasonable commercial efforts to develop, promote,
market and sell the Products and exploit the Technology and
any Improvements within the Field of Use and to meet or cause
to be met the market demand for the Products and the use of
the Technology and any Improvements.
11.4 The Licensee will:
(a) complete CDN$1,000,000.00 in financing within 12 months of
executing this Agreement to allow the Licensee to use its
reasonable commercial efforts to develop Products and to meet
the Licensee's ongoing working capital requirements for 24
months following the execution of this Agreement. The Licensee
shall notify, in writing, UBC within five calendar days of
completion of the said financing.
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For greater clarity, UBC and the Licensee shall be entering
into a license agreement concurrently with this agreement
wherein UBC shall grant to the Licensee a license to use the
Porous HA Coating Technology (the "POROUS HA COATING
LICENSE"). The Porous HA Coating License sets out the same
financing requirements as contained in this Article 11.4(a).
The Licensee shall only be obligated to raise a total of
CDN$1,000,000.00 in financing to fulfill this financing
requirement as set out in this Agreement and the Porous HA
Coating License;
(b) within six months of execution of this Agreement, establish
and maintain a Scientific Advisory Board with representatives
from academia and industry as experts in the area of the
Technology. The Scientific Advisory Board shall meet not less
than once per year and the recommendations of such Board shall
be made in writing to the Board of Directors of the Licensee
and shall provide a copy to UBC at the same time they are made
available to the Board of Directors of the Licensee;
(c) have provided to UBC, prior to execution of this Agreement, an
outline for a research and development plan that describes the
research plan for the 18 month period following the execution
of this Agreement and which clearly identifies milestones to
be attained by the Licensee;
(d) use its reasonable commercial efforts to retain, as soon as
reasonably possible after the execution of this Agreement, the
Investigator and the co-inventors of the Technology to assist
in the scientific and technical development of the Technology
and/or any Improvements within the Field of Use; such
technical support to commence as soon as reasonably possible
after the execution of this Agreement and continue for a
period of at least 12 months therefrom. The Licensee shall
enter into separate consulting arrangements with each of the
Investigator and the co-inventors of the Technology on terms
acceptable to the Licensee and the Investigator or the
co-inventors of the Technology.
The Licensee acknowledges and agrees that UBC shall be under
no obligation to provide any ongoing maintenance or support
services to the Licensee; and
(e) not enter into any agreements with the Government of the
United State or any other government in connection with the
Technology and/or any Improvements without the prior written
consent of UBC.
11.5 If UBC is of the view that the Licensee is in breach of Article 11.3, UBC
shall give the Licensee 60 calendar days written notice to remedy such breach.
If, after 60 calendar days of the delivery of such notice, the Licensee has not
cured the breach, the parties hereto shall appoint a mutually acceptable person
as an independent evaluator (the "EVALUATOR") to conduct the evaluation set
forth in Article 11.6. In the event that the parties cannot agree on such an
Evaluator the appointing authority shall be the British Columbia International
Commercial Arbitration Centre.
11.6 Unless the Parties mutually agree otherwise, the following rules and
procedures shall govern the conduct of the parties and the Evaluator before and
during the investigation by the Evaluator:
(a) within 30 calendar days of the appointment of the Evaluator
each party shall provide to the Evaluator and the other party
copies of all documents, statements and records on which the
party intends to rely in presenting its position to the
Evaluator;
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(b) within 45 calendar days of the appointment of the Evaluator
the Licensee shall provide to the Evaluator and UBC a written
summary of its position. On receipt of the Licensee's summary
UBC shall have 15 calendar days to prepare and submit to the
Licensee and the Evaluator its own summary in reply to the
summary submitted by the Licensee;
(c) on receipt of the documents, statements, records and summaries
submitted by the parties the Evaluator shall have 30 calendar
days within which to conduct such further inquiries as he or
she may deem necessary for the purpose of reviewing the
efforts made by the Licensee with respect to the promotion,
marketing and sale of the Products and the Technology and any
Improvements in compliance with the requirements of Article
11.3. For the purpose of conducting such an inquiry, the
Evaluator shall have the right to:
(i) require either party to disclose any further
documents or records which the Evaluator considers to
be relevant;
(ii) interview or question, either orally or by way of
written questions, one or more representatives of
either party on issues deemed to be relevant by the
Evaluator;
(iii) make an "on site" inspection of the Licensee's
facilities; and
(iv) obtain, if necessary, the assistance of an
independent expert to provide technical information
with respect to any area in which the Evaluator does
not have a specific expertise;
(d) on completion of the inquiry described in Article 11.6(c), the
Evaluator shall, within 15 calendar days, prepare a report
setting out his or her findings and conclusions as to whether
or not the Licensee has committed a breach of Article 11.3. If
the Evaluator has determined that the Licensee has committed a
breach of Article 11.3, then the Evaluator shall also set out
in the report his or her conclusions as to whether such
breach:
(i) was substantially due to external market conditions
not within the control of the Licensee, or
(ii) was substantially due to the Licensee's failure to
use its reasonable commercial efforts to comply with
the requirements of Article 11.3; and
(e) the report and conclusions of the Evaluator shall be delivered
to the Licensee and UBC and shall be accepted by both parties
as final and binding.
11.7 If the Evaluator concludes:
(a) pursuant to Article 11.6(d)(i), that the Licensee's breach was
substantially due to external market conditions, then UBC may,
at its option, terminate the Licensee's right to grant further
sublicenses of the Technology and any Improvements, and may
continue the license granted hereunder as an non-exclusive
license, but with all other terms and conditions of this
Agreement remaining unchanged;
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(b) pursuant to Article 11.6(d)(ii), that the Licensee's breach
was substantially due to the Licensee's failure to use its
reasonable commercial efforts, then UBC shall, at its option,
have the right to terminate this Agreement as provided in
Article 18(2)(f); or
(c) pursuant to Article 11.6(d), that the Licensee is not in
breach of Article 11.3, then UBC shall not terminate this
Agreement for breach of Article 11.3 nor shall it change the
nature of the license granted hereunder.
11.8 UBC may not call for more than one evaluation pursuant to Article 11.6 in
each calendar year. The cost of an evaluation hereunder shall be borne 50% by
the Licensee and 50% by UBC.
12.0 ACCOUNTING RECORDS:
12.1 The Licensee will maintain at its principal place of business, or another
place as may be most convenient, separate accounts and records of all Revenues,
sublicenses and Sublicensing Revenues and all business done in connection with
the Technology or any Improvements. The accounts and records will be in
sufficient detail to enable proper returns to be made under this Agreement and
the Licensee will cause its sublicensees to keep similar accounts and records.
12.2 The Licensee will deliver to UBC, on the date which is 30 calendar days
after each and every Royalty Due Date, together with the royalty payable under
this Agreement, the Accounting substantially in the form attached as Schedule
"C" and a report on all Sublicensing activity, including an accounting statement
setting out in detail how the amount of Sublicensing Revenue was determined and
identifying each sublicensee and the location of the business of each
sublicensee.
12.3 The calculation of royalties will be carried out in accordance with
generally accepted Canadian accounting principles ("GAAP"), or the standards and
principles adopted by the U.S. Financial Accounting Standards Board ("FASB"),
applied on a consistent basis.
12.4 The Licensee will retain the accounts and records referred to in Article
12.1 for at least six years from when they were made and will permit any duly
authorized representative of UBC to inspect the accounts and records during
normal business hours of the Licensee at UBC's expense. The Licensee will
provide to the representative of UBC all reasonable evidence as the
representative deems necessary to verify the Accounting and will permit the
representative to make copies of or extracts from the accounts, records and
agreements at UBC's expense. If an inspection of the Licensee's records by UBC
shows an under-reporting or underpayment by the Licensee of any amount to UBC by
more than five percent (5%) for any 12 month period, then the Licensee will
reimburse UBC for the cost of the inspection as well as pay to UBC any amount
found due (including any interest) within 30 calendar days of notice by UBC to
the Licensee.
12.5 During the term of this Agreement and after its expiry or termination UBC
will use reasonable efforts to ensure that all information provided to UBC or
its representatives under this Article remains confidential and is treated as
Confidential Information by UBC.
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13.0 INSURANCE:
13.1 During the term of this Agreement the Licensee will procure and maintain
insurance (including public liability and commercial general liability
insurance) as would be acquired by a reasonable and prudent businessperson
carrying on a similar line of business.
13.2 Notwithstanding Article 13.1, one month before the First Use of the
Technology or any Improvement the Licensee will give notice to UBC of the terms
and amount of the product liability, public liability, commercial general
liability insurance and such other types of insurance which it has placed. This
insurance will:
(a) be placed with a reputable and financially secure insurance
carrier;
(b) include UBC, its Board of Governors, faculty, officers,
employees, students and agents as additional insureds;
(c) provide primary coverage regarding all activities under this
Agreement;
(d) include a waiver of subrogation against UBC, and a
severability of interest and cross-liability clauses; and
(e) provide that the policy cannot be cancelled or materially
altered except on at least 30 calendar days' prior written
notice to UBC.
13.3 UBC may, from time to time, require reasonable amendments to the terms or
the amount of coverage contained in the Licensee's insurance policy. The
Licensee will provide to UBC, for its approval, certificates of insurance
evidencing the coverage seven calendar days before the First Use of the
Technology. The Licensee will not:
(a) allow the First Use of the Technology or any Improvement to
occur before the certificate is provided and approved by UBC;
or
(b) sell any Product or allow any third party to use the
Technology at any time unless the insurance outlined in
Article 13.3 is in effect.
13.4 The Licensee will also require each sublicensee to procure and maintain:
(a) public liability and commercial general liability insurance
and such other types of insurance as would be acquired by a
reasonable and prudent businessperson carrying on a similar
line of business; and
(b) in any event, one month before the First Use of the Technology
or any Improvement by the sublicensee, product liability,
public liability and commercial general liability insurance in
reasonable amounts and with a reputable and financially secure
insurance carrier.
The Licensee will use its reasonable commercial efforts to ensure that all
sublicensees' policies of insurance contain a waiver of subrogation against UBC,
its Board of Governors, faculty, officers, employees, students and agents.
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14.0 ASSIGNMENT & CHANGE OF CONTROL:
14.1 The Licensee will not assign, transfer, mortgage, pledge, financially
encumber, grant a security interest, permit a lien to be created, charge or
otherwise dispose of any or all of the rights granted to it under this Agreement
without the prior written consent of UBC, such consent not to be unreasonably
withheld.
14.2 UBC will have the right to assign its rights, duties and obligations under
this Agreement to a company of which it is the sole shareholder or a society
which it has incorporated or which has purposes which are consistent with the
objectives of UBC. If UBC makes such an assignment, the Licensee will release
and discharge UBC from all obligations or covenants; provided that the company
or society, as the case may be, signs a written agreement which provides that
the company or society assumes all obligations or covenants from UBC and that
the Licensee retains all rights granted to the Licensee under this Agreement.
14.3
15.0 GOVERNING LAW:
15.1 This Agreement is governed by, and will be construed in accordance with,
the laws of the Province British Columbia and the federal laws of Canada in
force in that province without regard to its conflict of law rules. All parties
agree that by executing this Agreement they have attorned to the jurisdiction of
the Supreme Court of British Columbia. The parties agree that the British
Columbia Supreme Court has exclusive jurisdiction over this Agreement.
16.0 NOTICES:
16.1 All payments, reports and notices or other documents that a party is
required or may want to deliver to any other party will be delivered:
(a) in writing; and
(b) either by personal delivery or by registered or certified mail
(with all postage and other charges prepaid) at the address
for the receiving party as set out in Article 16.2 or as
varied by any prior written notice.
Any notice personally delivered is deemed to have been received at the time of
delivery. Any notice mailed in accordance with this Article 16.1 is deemed to
have been received at the end of the fifth day after it is posted. 16.2
Addresses for delivery of notices:
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If to UBC: The Director
University - Industry Liaison Office
University of British Columbia
IRC 331 - ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇
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Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
If to the Licensee: ▇▇. ▇▇▇▇ ▇. ▇▇▇▇▇▇▇
MIV Therapeutics, Inc.
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Fax: (▇▇▇) ▇▇▇-▇▇▇▇
17.0 TERM:
17.1 The term of this Agreement and the license granted hereunder starts on the
Start Date and ends on:
(a) the day that is exactly 20 years later; or
(b) the expiry of the last Patent licensed under this Agreement,
whichever event is last to occur, unless terminated earlier under Article 18.
18.0 TERMINATION OF AGREEMENT:
18.1 This Agreement automatically and immediately terminates without notice to
the Licensee if any proceeding under the BANKRUPTCY AND INSOLVENCY ACT of
Canada, or any other statute of similar purpose, is started by or against the
Licensee.
18.2 UBC may, at its option, terminate this Agreement with immediate effect by
giving notice to the Licensee if one or more of the following occurs:
(a) the Licensee becomes insolvent, as evidenced, for example
(without limitation) by the appointment of a receiver or a
receiver manager, the issuance of financial statements which
according to GAAP would render the Licensee insolvent, the
termination of a majority of the Licensee's employees, the
vacation of the Licensee's chief place of business or the
Licensee ceasing or threatening to cease carrying on business;
(b) any execution or other process of any court becomes
enforceable against the Licensee, or if any similar process is
levied on the rights under this Agreement or on any money due
to UBC and is not released or satisfied by the Licensee within
30 calendar days from the process becoming enforceable or
being levied;
(c) any resolution is passed or order made or other steps taken
for the winding up, liquidation or other termination of the
existence of the Licensee;
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(d) the Technology or any Improvements becomes subject to any
security interest, lien, charge or encumbrance in favour of
any third party claiming through the Licensee;
(e) if the Licensee breaches any of Articles 4.1, 11.1 or 13;
(f) if it is determined, pursuant to Article 11.7, that the
Licensee is in breach of Article 11.3;
(g) if any sublicensee of the Licensee is in breach of its
sublicense with the Licensee and the Licensee does not cause
the sublicensee to cure the breach within 30 calendar days of
receipt of notice from UBC; or
(h) if the Licensee is in breach of any other agreement between
the Licensee and UBC and the breach has not been cured within
the time provided for the curing of the breach under the terms
of the other agreement.
18.3 Other than as set out in Articles 18.1 and 18.2, either party may terminate
this Agreement for any breach which is not remedied after providing the
following notice to the party in breach:
(a) 60 calendar days notice in the case of any breach which can
reasonably be remedied within 60 calendar days of the delivery
of such notice; or
(b) if the breach cannot be remedied within 60 calendar days and
the breach is not remedied within such further period as may
be reasonably necessary, or within 90 calendar days after
receipt of notice, whichever is sooner.
18.4 If this Agreement is terminated under Articles 18.1 to 18.3, the Licensee
will make all outstanding royalty payments to UBC as set out under Articles 5
and 6, and UBC may proceed to enforce payment of all outstanding royalties or
other monies owed to UBC and to exercise any or all of the rights and remedies
available under this Agreement or otherwise available by law or in equity,
successively or concurrently, at the option of UBC. Within five calendar days of
the Effective Termination Date the Licensee will deliver to UBC all Technology
and any Improvements in its possession or control and shall have no further
right of any nature at all in the Technology or any Improvements. If the
Licensee has not delivered up the Technology and any Improvements within five
calendar days from the Effective Termination Date, UBC may immediately and
without notice enter the Licensee's premises and take possession of the
Technology and any Improvements. The Licensee will pay all charges or expenses
incurred by UBC in the enforcement of its rights or remedies against the
Licensee under this Article 18.4 and including, without limitation, UBC's legal
fees and disbursements on an indemnity basis.
18.5 The Licensee and all sublicensees will cease to use the Technology or any
Improvements in any manner at all or to manufacture or sell the Products within
five calendar days from the Effective Termination Date. The Licensee will then
deliver to UBC an accounting within 30 calendar days from the Effective
Termination Date. The accounting will specify, in or on such terms as UBC may in
its sole discretion require, the inventory or stock of Products manufactured and
remaining unsold on the Effective Termination Date. UBC will instruct that the
unsold Products be stored, destroyed or sold under its direction; provided this
Agreement was terminated under Articles 18.2 or 18.3. Without limitation, if
this Agreement is terminated under Article 18.1 no Products will be sold without
the prior written consent of UBC. The Licensee will continue to make royalty
payments to UBC in the same manner specified in Articles 5 and 6 on all Products
that are sold in accordance with this Article 18.5 notwithstanding anything
contained in or any exercise of rights by UBC under Article 18.4. 18.6
Notwithstanding the termination or expiry of this Agreement, Article 12 remains
in full force and effect until six years after:
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(a) all payments of royalty required to be made by the Licensee to
UBC under this Agreement have been made by the Licensee to
UBC; and
(b) any other claim or claims of any nature or kind at all of UBC
against the Licensee have been settled.
19.0 MISCELLANEOUS COVENANTS OF LICENSEE:
19.1 The Licensee represents and warrants to UBC that the Licensee is a
corporation duly organized, existing and in good standing under the laws of the
State of Nevada and has the power, authority and capacity to enter into this
Agreement and to carry out the transactions contemplated by this Agreement; all
of which have been duly and validly authorized by all requisite corporate
proceedings.
19.2 The Licensee will comply with all laws, regulations and ordinances, whether
federal, state, provincial, county, municipal or otherwise, with respect to the
Technology and any Improvements and this Agreement.
19.3 Upon the presentation of itemized bills to the Licensee by UBC the Licensee
will pay all reasonable legal expenses and costs incurred by UBC regarding any
consents and approvals required from UBC and including, without limitation,
expenses and costs regarding UBC's review of any sublicenses to be granted by
the Licensee.
19.4 The Licensee will pay all taxes and any related interest or penalty
howsoever designated and imposed as a result of the existence or operation of
this Agreement and including, without limitation, tax which the Licensee is
required to withhold or deduct from payments to UBC. The Licensee will provide
to UBC evidence as may be required by Canadian authorities to establish that the
tax has been paid. The royalties specified in this Agreement are exclusive of
taxes. If UBC is required to collect a tax to be paid by the Licensee or any of
its sublicensees the Licensee will pay the tax to UBC on demand.
19.5 The obligation of the Licensee to make all payments under this Agreement is
absolute and unconditional and is not, except as expressly set out in this
Agreement, affected by any circumstance, including, without limitation, any
set-off, compensation, counterclaim, recoupment, defence or other right which
the Licensee may have against UBC or anyone else for any reason at all.
19.6 The Licensee will pay interest on all amounts due and owing to UBC under
this Agreement but not paid by the Licensee on the due date, at the rate of one
percent (1%) per month. The interest accrues on the balance of unpaid amounts
from time to time outstanding from the date on which portions of the amounts
become due and owing until payment in full.
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20.0 MANAGEMENT OF CONFLICTS OF INTEREST:
20.1 The Licensee acknowledges that it is aware of UBC's Conflict of Interest
Policy #97, Patent and Licensing Policy #88 and Research Policy #87, and that
UBC may amend these policies or introduce new policies from time to time.
20.2 Subject to Article 20.3, the Licensee and UBC agree that:
(a) the facilities and research programs of the Licensee will be
conducted independently of all UBC facilities, faculty,
students or staff and, in particular, independently of and
from the Investigator and the laboratory facilities made
available to the Investigator by reason of the Investigator's
employment at UBC;
(b) no students, post-doctoral fellows or other UBC staff will
participate or be involved in the Licensee's research,
projects or utilize its facilities; and
(c) any disclosures of inventions made by the Investigator to the
Licensee will be immediately forwarded by the Licensee to UBC.
20.3 The Licensee and UBC may, from time to time, enter into written agreements
to permit activities which would otherwise be prohibited by Article 20.2.
21.0 GENERAL:
21.1 The Licensee will permit UBC, during normal business hours, to enter any
premises of the Licensee for the purpose of ascertaining whether or not this
Agreement has been, is being or will be complied with by the Licensee.
21.2 Nothing contained in this Agreement is to be deemed or construed to create
between the parties a partnership or joint venture. No party has the authority
to act on behalf of any other party, to commit any other party in any manner at
all or to cause any other party's name to be used in any way not specifically
authorized by this Agreement.
21.3 Subject to the limitations contained in this Agreement, this Agreement
operates for the benefit of and is binding on the parties and their respective
successors and permitted assigns.
21.4 No condoning, excusing or overlooking by any party of any default, breach
or non-observance by any other party at any time or times regarding any terms of
this Agreement operates or will operate as a waiver of that party's rights under
this Agreement. A waiver of any term or right under this Agreement will be in
writing signed by the party entitled to the benefit of that term or right and is
effective only to the extent set out the written waiver.
21.5 No exercise of a specific right or remedy by any party precludes it from or
prejudices it in exercising another right or pursuing another remedy or
maintaining an action to which it may otherwise be entitled either at law or in
equity.
21.6 Headings in this Agreement are for reference only and do not form a part of
this Agreement and are not be used in the interpretation of this Agreement.
21.7 All terms in this Agreement which require performance by the parties after
the expiry or termination of this Agreement will remain in force despite this
Agreement's expiry or termination for any reason.
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21.8 In the event that any Article, section, clause, paragraph or subparagraph
of this Agreement shall be held to be indefinite, invalid, illegal or otherwise
voidable or unenforceable, the entire Agreement shall not fail on account
thereof, the offending provision may be severed from this Agreement and the
balance of this Agreement will continue in full force and effect.
21.9 The Licensee acknowledges that the law firm of ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ has
acted solely for UBC in connection with this Agreement and that all other
parties have been advised to seek independent legal advice.
21.10 This Agreement sets out the entire understanding between the parties and
no changes to this Agreement are binding unless signed in writing by the parties
to this Agreement.
21.11 Time is of the essence of this Agreement.
21.12 In this Agreement, unless the contrary intention appears, the singular
includes the plural and vice versa and words importing a gender include other
genders.
SIGNED BY THE PARTIES AS AN AGREEMENT on the 13 day of February, 2003,
but effective as of the Start Date.
SIGNED FOR AND ON BEHALF of )
THE UNIVERSITY OF BRITISH COLUMBIA )
by its authorized signatories: )
) ▇▇▇▇▇ ▇. ▇▇▇▇▇
/s/ ▇▇▇▇▇ ▇▇▇▇▇ )
---------------------------------------------- )
Authorized Signatory ) Associate Director
) University-Industry Liaison
)
---------------------------------------------- )
Authorized Signatory )
THE CORPORATE SEAL of )
MIV THERAPEUTICS, INC. )
was hereunto affixed in the presence of: )
) c/s
/s/ ▇▇▇▇ ▇▇▇▇▇▇▇, Chairman, President, CEO )
---------------------------------------------- )
Authorized Signatory )
)
)
---------------------------------------------- )
Authorized Signatory )
SCHEDULE "A"
DESCRIPTION OF "TECHNOLOGY"
UBC FILE # INVENTOR(S) DESCRIPTION PATENT #
------------------- --------------------------- ---------------------------------- ---------------------------------
▇▇-▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇, Sol-gel calcium phosphate US Patent No. 6,426,114 filed
▇▇▇▇-Mo Liu ceramic coatings and method of May 2, 2000
making same
Canadian Patent Application No.
2,345,552 filed April 27, 2001
------------------- --------------------------- ---------------------------------- ---------------------------------
▇▇-▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇, et al. Novel Sol-gel calcium phosphate US Provision Patent Application
ceramic coatings and method of filed September 13, 2002,
making same
------------------- --------------------------- ---------------------------------- ---------------------------------
SCHEDULE "B"
DESCRIPTION OF "MATERIALS"
UBC will provide the Hydroxyapatite coatings which are to be applied on stents
to be provided by the Licensee
SCHEDULE "C"
PAYMENT REPORT FOR THE PERIOD DD/MM/YY TO DD/MM/YY
INSTRUCTIONS FOR COMPLETING THIS REPORT
Please fill out each section in full, identifying in the Royalty Summary Table
the unit sales and geographical sales areas. If the licence with UBC involves
several product lines, please prepare a separate Summary Table for each product
line. For licences involving sublicencing revenue, please prepare an additional
report for each sublicence.
PLEASE NOTE: AN INTEREST RATE OF 1% PER MONTH WILL BE ASSESSED AGAINST ALL PAYMENTS IN ARREARS.
Prepared by Date Dd/mm/yy Phone
---------------------------------- ---------- ---------------------
Approved by Date Dd/mm/yy Phone
---------------------------------- ---------- ---------------------
Licensee Agreement # UBC to provide UBC ID # UBC to provide
-------------------------- -------------- ----------------
UBC Technology UBC to provide
---------------------------------------------------------------------------------
REPORT TYPE (CHECK ONE AND COMPLETE AS APPROPRIATE)
Single Product Line [ ] Product Line Trade Name
Multiple Products [ ] Page __ of __ Product Line Trade Name
----------------------------------
Sublicence Report [ ] Page __ of __
PAYMENTS THIS QUARTER (PLEASE COMPLETE SEPARATE TABLES FOR MULTIPLE PRODUCT LINES)
ROYALTIES ON PRODUCT SALES
---------------- -------- ------------ ------------ ---------- ---------- ---------- -------------- ------------------------------
COUNTRY UNITS UNIT PRICE GROSS SALES LESS NET SALES ROYALTY CONVERSION PERIOD ROYALTY AMOUNT
SOLD (DOMESTIC ALLOWANCES* RATE RATE (TO (CANADIAN $)
CURRENCY) CANADIAN $)
---------------- -------- ------------ ------------ ---------- ---------- ---------- -------------- --------------- --------------
This yr Last yr
---------------- -------- ------------ ------------ ---------- ---------- ---------- -------------- --------------- --------------
CANADA
US
EUROPE
(specify
countries)
JAPAN
OTHER
--------------------------------------------------------------------------------------------------- --------------- --------------
TOTAL PRODUCT ROYALTIES
--------------- --------------
ADDITIONAL PAYMENTS (COMPLETE ALL THAT APPLY)
Minimum Royalty Fee [ ] Amount
---- --------------- --------------
Milestone Payment [ ] Amount
--------------- --------------
Annual Licence Maintenance Fee [ ] Amount
--------------- --------------
This Year Last Year
--------------- --------------
TOTAL PAYMENTS FOR PERIOD
--------------- --------------
*Please indicate the reasons for returns or other allowances, if significant. Please note any unusual occurrences
that affected royalty amounts during the period.
FOR FURTHER INFORMATION, PLEASE CONTACT _________________ AT PHONE NUMBER (604)_____________________
