LICENSE AGREEMENT between OcuSense Inc. and The Regents of the University of California for CASE NO. SD2002-180
between
OcuSense
Inc.
and
The
Regents of the University of California
for
CASE
NO. SD2002-180
"Volume
Independent Tear Film Osmometer"
***The
following provisions of this Agreement have been omitted pursuant to a request
for confidential treatment and have been filed separately with the U.S.
Securities and Exchange Commission: Article 3 in its entirety (consisting
of
four pages) and a portion of Section 4.3.
1
TABLE
OF CONTENTS
Article
1: Definitions
……………………………………………………………………………………………………………………………………………………………………….……. Page
4
Article
2: Grants
…………………………………………………………………….……………………………………………………………………………………………………….….... Page
6
Article
3:
Considerations………………………………………………………………………………………………………………………………………………...………………….……
Page 7
Article
4: Reports, Records and Payments
……………………………………………………………………………………………………………………..……………………………... Page
11
Article
5: Patent Matters
…………………………………………………………………………………………………………………………………………….………………………….. Page
13
Article
6: Governmental Matters
………………………………………………………………………………………………………………………….........………………………………. Page
15
Article
7: Termination of Agreement
……………………………………………………………………………………………………………........………………………………………... Page
15
Article
8: Limited Warranty and Indemnification
………………………………………………………………………………………………………………………......………………… Page 16
Article
9: Use of Names and Trademarks
………………………………………………………………………………………………………………………….......……………………… Page
17
Article
10: Miscellaneous Provisions
…………………………………………………………………………………………………………………………………………......…………... Page
18
Exhibit
A: Certificate of Incorporation
………………………………………………………………………….……………………………………………………………………………… A-l
2
THIS
AGREEMENT ("Agreement")
is made by and between OcuSense Inc., a Delaware corporation, having an address
at ▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, #▇, ▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("LICENSEE")
and The
Regents of The University of California, a California corporation having
its
statewide administrative offices at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇-▇▇▇▇ ("UNIVERSITY"), represented by its San Diego campus having an
address
at University of California, San Diego, Technology Transfer & Intellectual
Property Services, Mail-code 0910, ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇-▇▇▇▇ ("UCSD").
THIS
AGREEMENT is
effective on the date of the last signature ("Effective Date").
RECITALS
WHEREAS,
the
inventions disclosed in UCSD Case Docket No. SD2002-180 and titled "Volume
Independent Tear Film Osmometer" ("Invention"), were made in the course of
research at UCSD by ▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ (hereinafter, the "Inventor") and
are
covered by Patent Rights as defined below;
WHEREAS,
the
research was sponsored in part by the Government of the United States of
America
and as a consequence this license is subject to overriding obligations to
the
Federal Government under 35 U.S.C. §§ 200-212 and applicable
regulations;
WHEREAS,
the
Inventor is an employee of UCSD, and is obligated to assign all of his right,
title and interest in the Invention to UNIVERSITY;
WHEREAS,
the
founder of LICENSEE entered into a secrecy agreement (UC Control
No.2003-20-0193) with UNIVERSITY, effective October 21, 2002 ("Secrecy
Agreement"), for the purpose of evaluating the Invention;
WHEREAS,
the
founder of LICENSEE entered into a Letter of Intent (UC Control No.2003-30-0222)
with UNIVERSITY, effective November 12, 2002, ("Letter of Intent"), for the
purpose of negotiating this Agreement;
WHEREAS,
UNIVERSITY
is desirous that the Invention be developed and utilized to the fullest possible
extent so that its benefits can be enjoyed by the general public;
WHEREAS,
LICENSEE
is desirous of obtaining certain rights from UNIVERSITY to commercially develop,
use, and sell the Invention, and the UNIVERSITY is willing to grant such
rights;
and
WHEREAS,
LICENSEE understands that UNIVERSITY may publish or otherwise disseminate
information concerning the Invention at any time and that LICENSEE is paying
consideration thereunder for its early access to the Invention, not continued
secrecy therein.
NOW,
THEREFORE,
the
parties agree:
ARTICLE
1. DEFINITIONS
The
terms, as defined herein, shall have the same meanings in both their singular
and plural forms.
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1.1
|
"Affiliate"
means any corporation or other business entity in which LICENSEE
owns or
controls, directly or indirectly, at least fifty percent (50%)
of the
outstanding stock or other voting rights entitled to elect directors,
or
in which LICENSEE is owned or controlled directly or indirectly
by at
least fifty percent (50%) of the outstanding stock or other voting
rights
entitled to elect directors; but in any country where the local
law does
not permit foreign equity participation of at least fifty percent
(50%),
then an "Affiliate" includes any company in which LICENSEE owns
or
controls or is owned or controlled by, directly or indirectly,
the maximum
percentage of outstanding stock or voting rights permitted by local
law.
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1.2
"Field"
means:
(a)
diagnostic use and products that incorporate osmolarity analysis in
ophthalmology and optometry;
(b)
osmolarity analysis in the beverage industry;
(c)
emergency medicine osmolarity analysis for the following applications: alcohol
intoxication, drug intoxication screening; head injury, coma, ▇▇▇▇▇; quality
control of pharmaceutical formulations, hospital admixtures, and nutritional
support formulary;
(d)
obstetrics/gynecology osmolarity analysis for the following applications:
pre-eclamptic patients, in-vitro fertilization/intracytoplasmic sperm
injection;
(e)
internal medicine/endocrinology osmolarity analysis for the following
applications: inappropriate adh syndrome, hyper/hyponatremia, diabetes
insipidus, insulin therapy, differential diagnosis of polyuria;
(f) pharmacy/quality
control osmolarity analysis for the following applications: quality control
of
pharmaceutical preparations, including infant formulas, electrolyte solutions
and other parenterals; cardioplegic fluids; contrast agents; parenteral
preparation; wash solution;
(g)
surgery/critical care osmolarity analysis for the following applications:
hypovolemic/hypervolemic shock prevention; electrolyte/metabolyte imbalance;
iv
therapy; liver transplant; glycine uptake;
(h)
urology/renal function osmolarity analysis for the following applications:
renal
malfunction differential diagnosis, uremia, osmolal & free water clearance,
renal dialysis;
(i)
sports medicine osmolarity analysis for the following applications: athlete
hydration;
(j)
consumer
products osmolarity analysis for the following applications: car windshield
wash;
(k)
pharmaceutical/biotechnology osmolarity analysis for the following applications:
quality control of cell lines, tissue cultures, and media manufacture;
and
(1)
agriculture osmolarity analysis for the following applications: plant hydration.
Fields for which first commercial sale has not initiated within 7 years will
be
excluded.
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1.3
|
"Territory"
means worldwide where Patent Rights exist, except for counties
where
LICENSEE declines to reimburse UCSD patent costs under Paragraph
5.1
(d).
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|
1.4
|
"Term"
means the period of time beginning on the Effective Date and ending
on the
later of (i) the expiration date of the longest-lived Patent Rights;
or
(ii) the twenty-first (21st) anniversary of Effective
Date.
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|
1.5
|
"Patent
Rights"
means any of the following: the US patent application (Serial No.
60/401,432 titled "Volume Independent Tear Film Osmometer") disclosing
and
claiming the Invention, filed by Inventor on or about August 6,
2002 and
assigned to UNIVERSITY; and continuing applications thereof including
divisions, substitutions, and continuations-in-part (but only to
extent
the claims thereof are enabled by disclosure of the parent application);
any patents issuing on said applications including reissues,
reexaminations and extensions; and any corresponding foreign applications
or patents.
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1.6
|
"Sponsor
Rights"
means all the applicable provisions of any license to the United
States
Government executed by UNIVERSITY and the overriding obligations
to the
Federal Government under 35 U.S.C. §§ 200-212 and applicable governmental
implementing regulations.
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3
|
1.7
|
"Licensed
Method"
means any method that is covered by Patent Rights the use of which
would
constitute, but for the license granted to LICENSEE under this
Agreement,
an infringement of any pending or issued and unexpired claim within
Patent
Rights.
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1.8
|
"Licensed
Product"
means any services, composition or product that is covered by the
claims
of Patent Rights, or that uses or is produced by the Licensed Method,
or
the manufacture, use, sale, offer for sale, or importation of which
would
constitute, but for the license granted to LICENSEE by UNIVERSITY
herein,
an infringement of any pending or issued and unexpired claim within
the
Patent Rights.
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1.9
|
"Sublicensee"
means a third party to whom LICENSEE grants a sublicense of certain
rights
granted to LICENSEE under this
Agreement.
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1.10
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"Net
Sales"
means the total of the gross invoice prices of Licensed Products
sold by
LICENSEE, an Affiliate, or any combination thereof, less the sum
of the
following actual and customary deductions where applicable and
separately
listed: cash, trade, or quantity discounts; sales, use, tariff,
import/export duties or other excise taxes imposed on particular
sales
(except for value-added and income taxes imposed on the sales of
Licensed
Products in foreign countries); transportation charges; or credits
to
customers because of rejections or returns. For purposes of calculating
Net Sales, transfers to an Affiliate of Licensed Product under
this
Agreement for (i) end use (but not resale) by the Affiliate shall
be
treated as sales by LICENSEE at list price of LICENSEE, or (ii)
resale by
an Affiliate shall be treated as sales at the list price of the
Affiliate.
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1.11
|
"Patent
Costs"
means all out-of-pocket expenses for the preparation, filing, prosecution,
and maintenance of all United States and foreign patents included
in
Patent Rights. Patent Costs shall also include reasonable out-of-pocket
expenses for patentability opinions, inventorship determination,
preparation and prosecution of patent application, re-examination,
re-issue, interference, and opposition activities related to patents
or
applications in Patent Rights.
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ARTICLE
2. GRANTS
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2.1
|
License.
Subject to the limitations set forth in this Agreement, UNIVERSITY
hereby
grants to LICENSEE, and LICENSEE hereby accepts, an exclusive license
under Patent Rights to make, use, sell, offer for sale, and import
Licensed Products and to practice the Licensed Method in the Field
within
the Territory and during the Term.
|
2.2
Sublicense.
(a)
Subject to the limitations set forth in this Agreement, UNIVERSITY hereby
grants
to LICENSEE, and LICENSEE hereby accepts, the right to sublicense the Patent
Rights to Sublicensees but only for so long as LICENSEE'S license under the
Patent Rights is exclusive.
(b)
Notwithstanding any other terms in this Agreement, LICENSEE shall not sublicense
the Patent Rights to any Affiliate of LICENSEE or to any Affiliate of LICENSEE'S
Affiliates.
(c)
With
respect to sublicense granted pursuant to Paragraph 2.2(a), LICENSEE
shall:
(1)
not
receive, or agree to receive, anything of value in lieu of cash as
considerations from a third party under a sublicense granted pursuant to
Paragraph 2.2(a) without the express written consent of UNIVERSITY;
(2)
to
the extent applicable, include all of the rights of and obligations due to
UNIVERSITY (and, if applicable, Sponsor Rights) contained in this
Agreement;
(3)
promptly provide UNIVERSITY with a copy of each sublicense issued;
and
(4)
collect and guarantee payment of all payments due, directly or indirectly,
to
UNIVERSITY from Sublicensees and summarize and deliver all reports due, directly
or indirectly, to UNIVERSITY from Sublicensees.
(d)
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(1)
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LICENSEE
shall notify UNIVERSITY of any proposed grant of a sublicense and
the
terms thereof. UNIVERSITY shall then have ten (10) business days
to notify
LICENSEE that the terms of such proposed sublicense is acceptable
or not
acceptable, provided, however, that if UNIVERSITY does not notify
LICENSEE
that the terms are either acceptable or not acceptable, then UNIVERSITY
shall be deemed to accept the proposed terms of such proposed
sublicense.
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(2)
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If
a sublicense has been preapproved according to subparagraph 2.2
(d)(1),
upon termination of this Agreement for any reason, such sublicense
shall
continue in full force and effect. If a sublicense has been preapproved
according to subparagraph 2.2 (d)(1), upon the license grant in
Paragraph
2.1 becoming nonexclusive such sublicense shall continue in full
force and
effect and all of the payments received thereafter by LICENSEE
from such
Sublicensee, if any, shall be paid and/or forwarded to
UNIVERSITY.
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(3)
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Unless
sublicense has been preapproved according to subparagraph 2.2 (d)(1),
upon
termination of this Agreement for any reason, or upon the license
grant in
Paragraph 2.1 becoming nonexclusive, UNIVERSITY, at its sole discretion,
shall determine whether LICENSEE shall cancel or assign to UNIVERSITY
any
and all sublicenses.
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2.3
Reservation
of Rights.
UNIVERSITY reserves the right to:
(a)
use
the
Invention and Patent Rights for educational and research purposes;
(b)
publish
or otherwise disseminate any information about the Invention at any time;
and
(c)
allow
other nonprofit institutions to use Invention, and Patent Rights for educational
and
research
purposes in their facilities.
ARTICLE
3. CONSIDERATIONS
***Article
3 in its entirety, which consists of four pages, has been omitted pursuant
to a
request for confidential treatment and has been filed separately with the
U.S.
Securities and Exchange Commission.
4
ARTICLE
4. REPORTS, RECORDS AND PAYMENTS
4.1
Reports.
(a)
Progress
Reports.
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(1)
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Beginning
July 1, 2003 and ending on the date of first commercial sale of
a Licensed
Product, LICENSEE shall submit to UNIVERSITY semi-annual progress
reports
covering LICENSEE's (and Affiliate's and Sublicensee's) activities
to
develop and test all Licensed Products and obtain governmental
approvals
necessary for marketing the same. Such reports shall include a
summary of
work completed; summary of work in progress; current schedule of
anticipated events or milestones; market plans for introduction
of
Licensed Products; and summary of resources (dollar value) spent
in the
reporting period.
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(2)
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LICENSEE
shall also report to UNIVERSITY, in its immediately subsequent
progress
report, the date of first commercial sale of a Licensed Product
in each
country.
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(b)
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Royalty
Reports. After
the first commercial sale of a Licensed Product anywhere in the
world,
LICENSEE shall submit to UNIVERSITY quarterly reports on or before
February 28, May 31, August 31 and November 30 of each year. Each
report
shall cover LICENSEE's (and each Affiliate's and Sublicensee's)
most
recently completed calendar quarter and shall
show:
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(1)
the
gross sales, deductions as provided in Paragraph 1.10, and Net Sales during
the
most recently completed calendar quarter and the royalties, in US dollars,
payable with respect thereto;
(2)
the
number of each type of Licensed Product sold;
(3)
sublicense fees and royalties received during the most recently completed
calendar quarter in US dollars, payable with respect thereto;
(4)
the
method used to calculate the royalties; and
(5)
the
exchange rates used.
If
no
sales of Licensed Products have been made and no sublicense revenues have
been
received by LICENSEE during any reporting period, LICENSEE shall so
report.
4.2
Records
&
Audits.
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(a)
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LICENSEE
shall keep, and shall require its Affiliates and Sublicensees to
keep
accurate and correct records of all Licensed Products manufactured,
used,
and sold, and sublicense fees received under this Agreement. Such
records
shall be retained by LICENSEE for at least five (5) years following
a
given reporting period.
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(b)
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All
records shall be available during normal business hours for inspection
at
the expense of UNIVERSITY by UNIVERSITY's Internal Audit Department
or by
a Certified Public Accountant selected by UNIVERSITY and in compliance
with the other terms of this Agreement for the sole purpose of
verifying
reports and payments or other compliance issues. Such inspector
shall not
disclose to UNIVERSITY any information other than information relating
to
the accuracy of reports and payments made under this Agreement
or other
compliance issues. In the event that any such inspection shows
an under
reporting and underpayment in excess of five percent (5%) for any
twelve
(12) month period, then LICENSEE shall pay the cost of the audit
as well
as any additional sum that would have been payable to UNIVERSITY
had the
LICENSEE reported correctly, plus an interest charge at a rate
of ten
percent (10%) per year. Such interest shall be calculated from
the date
the correct payment was due to UNIVERSITY up to the date when such
payment
is actually made by LICENSEE. For underpayment not in excess of
five
percent (5%) for any twelve (12) month period, LICENSEE shall pay
the
difference within thirty (30) days without interest charge or inspection
cost.
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4.3
Payments.
(a)
All
fees
and royalties due UNIVERSITY shall be paid in United States dollars and all
checks shall be made payable to "The Regents of the University of California",
referencing UNIVERSITY's taxpayer identification number, ▇▇-▇▇▇▇▇▇▇. When
Licensed Products are sold in currencies other than United States dollars,
LICENSEE shall first determine the earned royalty in the currency of the
country
in which Licensed Products were sold and then convert the amount into equivalent
United States funds, using the exchange rate quoted in the Wall Street Journal
on the last business day of the applicable reporting period.
LICENSEE
is responsible for all bank charges of wire transferred funds.
Electronic
Transfer of Fund Information
***A
portion of Section 4.3 has been omitted pursuant to a request for confidential
treatment and has been filed separately with the U.S. Securities and Exchange
Commission.
UCSD
addendum information: UCSD agreement number, contract number, PI, departmental
contact person, and Invoice Number.
UNIVERSITY
will be notified by fax of a copy of the wire transfer receipt to Technology
Transfer & Intellectual
Property Services Accounting Division at ▇▇▇-▇▇▇-▇▇▇▇. The bank charges should
not be deducted from the total amount due to UNIVERSITY.
(b)
Royalty
Payments.
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(1)
|
Royalties
shall accrue when Licensed Products are invoiced, or if not invoiced
when
Licensed Products are delivered to a third party or
Affiliate.
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(2)
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LICENSEE
shall pay earned royalties quarterly on or before February 28,
May 31,
August 31 and November 30 of each calendar year. Each such payment
shall
be for royalties earned during LICENSEE's most recently completed
calendar
quarter.
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(3)
|
Royalties
earned on sales occurring or under sublicense granted pursuant
to this
Agreement in any country outside the United States shall not be
reduced by
LICENSEE for any taxes, fees, or other charges imposed by the government
of such country on the payment of royalty income, except that all
payments
made by LICENSEE in fulfillment of UNIVERSITY's tax liability in
any
particular country may be credited against earned royalties or
fees due
UNIVERSITY for that country. LICENSEE shall pay all bank charges
resulting
from the transfer of such royalty
payments.
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(4)
|
If
at any time legal restrictions prevent the prompt remittance of
part or
all royalties by LICENSEE with respect to any country where a Licensed
Product is sold or a sublicense is granted pursuant to this Agreement,
LICENSEE shall convert the amount owed to UNIVERSITY into US currency
and
shall pay UNIVERSITY directly from its US sources of fund for as
long as
the legal restrictions apply.
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(5)
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LICENSEE
shall not collect royalties from, or cause to be paid on Licensed
Products
sold to the account of the US Government or any agency thereof
as provided
for in the license to the US
Government.
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(6)
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In
the event that any patent or patent claim within Patent Rights
is held
invalid in a final decision by a patent office from which no appeal
or
additional patent prosecution has been or can be taken, or by a
court of
competent jurisdiction and last resort and from which no appeal
has or can
be taken, all obligation to pay royalties based solely on that
patent or
claim or any claim patentably indistinct therefrom shall cease
as of the
date of such final decision. LICENSEE shall not, however, be relieved
from
paying any royalties that accrued before the date of such final
decision,
that are based on another patent or claim not involved in such
final
decision.
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(c) Late
Payments.
In the
event royalty, reimbursement and/or fee payments are not received by UNIVERSITY
when due, LICENSEE shall pay to UNIVERSITY interest charges at a rate of
ten
percent (10%) per year. Such interest shall be calculated from the date payment
was due until actually received by UNIVERSITY.
5
ARTICLE
5. PATENT MATTERS
5.1
Patent
Prosecution and Maintenance.
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(a)
|
Provided
that LICENSEE has reimbursed UNIVERSITY for prior Patent Costs
pursuant to
Paragraph 3.2, UNIVERSITY shall diligently prosecute and maintain
the
United States and, if available, foreign, patents and applications
in
Patent Rights using counsel of its choice. UNIVERSITY shall provide
LICENSEE with copies of all relevant documentation relating to
such
prosecution and LICENSEE shall keep this documentation confidential.
The
counsel shall take instructions only from UNIVERSITY, and all patents
and
patent applications in Patent Rights shall be assigned solely to
UNIVERSITY. UNIVERSITY shall give LICENSEE notice of its intent
and plans
to file any United States and/or foreign patents and applications
in
Patent Rights.
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(b)
|
UNIVERSITY
shall consider amending any patent application in Patent Rights
to include
claims reasonably requested by LICENSEE to protect the products
contemplated to be sold by LICENSEE under this
Agreement.
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(c)
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LICENSEE
shall cooperate and assist UNIVERSITY to apply for an extension
of the
term of any patent in Patent Rights if appropriate under the Drug
Price
Competition and Patent Term Restoration Act of 1984 and/or European,
Japanese and other foreign counterparts of this law. LICENSEE shall
prepare all documents for such application, and UNIVERSITY shall
execute
such documents and to take any other additional action as LICENSEE
reasonably requests in connection
therewith.
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(d)
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LICENSEE
may elect to terminate its reimbursement obligations with respect
to any
patent application or patent in Patent Rights upon three (3) months
written notice to UNIVERSITY. UNIVERSITY shall use reasonable efforts
to
curtail further Patent Costs for such application or patent when
such
notice of termination is received from LICENSEE. UNIVERSITY, in
its sole
discretion and at its sole expense, may continue prosecution and
maintenance of said application or patent, and LICENSEE shall then
have no
further license with respect thereto. Non-payment of any portion
of Patent
Costs with respect to any application or patent, after notice to
LICENSEE
and a 30 day period in which to cure such non-payment, may be deemed
by
UNIVERSITY as an election by LICENSEE to terminate its reimbursement
obligations with respect to such application or patent. UNIVERSITY
is not
obligated to file, prosecute, or maintain Patent Rights to which
LICENSEE
has terminated its License
hereunder.
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5.2
Patent
Infringement.
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(a)
|
If
LICENSEE learns of any substantial infringement of Patent Rights,
LICENSEE
shall so inform UNIVERSITY and provide UNIVERSITY with reasonable
evidence
of the infringement, and UNIVERSITY hereby agrees to take no action
for at
least ninety (90) days thereafter. If UNIVERSITY learns of any
substantial
infringement of Patent Rights, UNIVERSITY shall so inform LICENSEE
and
provide LICENSEE with reasonable evidence of the infringement,
and
LICENSEE hereby agrees to take no action for at least ninety (90)
days
thereafter. Neither party shall notify a third party of the infringement
of Patent Rights without the consent of the other party. Both parties
shall use reasonable efforts and cooperation to terminate infringement
without litigation.
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(b)
|
If
infringing activity of potential commercial significance by the
infringer
has not been abated within ninety (90) days following the date
notice of
such infringing activity is given to the other party pursuant to
5.2(a)
above, the LICENSEE shall have the first right to institute suit
for
patent infringement against the infringer. UNIVERSITY may voluntarily
join
such suit at its own expense, but may not thereafter commence suit
against
the infringer for the acts of infringement that are the subject
of the
Licensee's suit or any judgment rendered in that suit. The LICENSEE
may
not join UNIVERSITY in a suit initiated by the LICENSEE without
UNIVERSITY's prior written consent, provided, however, that if
UNIVERSITY
is a necessary or required party in any such suit, then no consent
shall
be required. If, in a suit initiated by the LICENSEE, UNIVERSITY
is
involuntarily joined other than by the LICENSEE, or if UNIVERSITY
is
joined because it is deemed to be a necessary or required party,
the
LICENSEE will pay any costs incurred by UNIVERSITY arising out
of such
suit, including but not limited to, any reasonable legal fees of
counsel
that UNIVERSITY selects and retains to represent it in the
suit.
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(c)
|
Recoveries
from actions brought by LICENSEE pursuant to Paragraph 5.2(b) shall
belong
to the LICENSEE, provided, however, that the amount such recoveries
exceed
LICENSEE's expenses for such actions shall be subject (i) to the
royalty
in Paragraph 3.1(g) above if the net amount of any such recovery
is
considered to be "Net Sales;" or (ii) subject to the sublicensing
royalties in Paragraph 3.1(e) or 3.1(f) above as may be appropriate
if the
net amount of any such recovery is considered to be "royalties"
payable to
LICENSEE as if in a LICENSEE-Sublicensee relationship. If LICENSEE
has not
initiated any action to ▇▇▇▇▇ the infringing activity within ninety
(90)
days after the expiration of the ninety (90) days after notice
of such
infringing activity is given to the other party pursuant to 5.2(a)
above,
then UNIVERSITY shall have the right to bring such suit, and recoveries
from such actions brought by UNIVERSITY shall belong entirely to
UNIVERSITY.
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| (d) |
Each
party shall cooperate with the other in litigation proceedings
at the
expense of the party bringing suit. Litigation shall be controlled
by the
party bringing the suit, except that UNIVERSITY may be represented
by
counsel of its choice in any suit brought by
LICENSEE.
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| 5.3 |
Patent
Marking.
LICENSEE shall ▇▇▇▇ all Licensed Products made, used or sold under
the
|
terms
of
this Agreement, or their containers, in accordance with the applicable patent
marking
laws.
ARTICLE
6. GOVERNMENTAL MATTERS
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6.1
|
Governmental
Approval or Registration.
If this Agreement or any associated transaction is required by
the law of
any nation to be either approved or registered with any governmental
agency, LICENSEE shall assume all legal obligations to do so. LICENSEE
shall notify UNIVERSITY if it becomes aware that this Agreement
is subject
to a United States or foreign government reporting or approval
requirement. LICENSEE shall make all necessary filings and pay
all costs
including fees, penalties, and all other out-of-pocket costs associated
with such reporting or approval
process.
|
|
6.2
|
Export
Control Laws.
LICENSEE shall observe all applicable United States and foreign
laws with
respect to the transfer of Licensed Products and related technical
data to
foreign countries, including, without limitation, the International
Traffic in Arms Regulations and the Export Administration
Regulations.
|
ARTICLE
7. TERMINATION OF THE AGREEMENT
|
7.1
|
Termination
by UNIVERSITY.
If LICENSEE fails to perform or violates any term of this Agreement,
then
UNIVERSITY may give written notice of default ("Notice of Default")
to
LICENSEE. If LICENSEE fails to cure the default within sixty (60)
days of
the Notice of Default, UNIVERSITY may terminate this Agreement
and the
license granted herein by a second written notice ("Notice of
Termination") to LICENSEE. If a Notice of Termination is sent to
LICENSEE,
this Agreement shall automatically terminate on the effective date
of that
notice. Termination shall not relieve LICENSEE of its obligation
to pay
any fees owed at the time of termination and shall not impair any
accrued
right of UNIVERSITY.
|
6
7.2
Termination
by
Licensee.
|
(a)
|
LICENSEE
shall have the right at any time and for any reason to terminate
this
Agreement upon a ninety (90) day written notice to UNIVERSITY.
Said notice
shall state LICENSEE's reason for terminating this
Agreement.
|
|
(b)
|
Any
termination under Paragraph 7.2(a) shall not relieve LICENSEE of
any
obligation or liability accrued under this Agreement prior to termination
or rescind any payment made to UNIVERSITY or action by LICENSEE
prior to
the time termination becomes effective. Termination shall not affect
in
any manner any rights of UNIVERSITY arising under this Agreement
prior to
termination.
|
|
7.3
|
Survival
on Termination.
The following Paragraphs and Articles shall survive the termination
of
this Agreement:
|
(a)
Article 1 (DEFINITIONS)
(b)
Article 4.2 & 4.3
(RECORDS, AUDITS AND PAYMENTS)
(c)
Paragraph 7.4 (Disposition of Licensed Products on Hand);
(d)
Paragraph 8.2(a) (Indemnification);
(e)
Article 9 (USE OF NAMES AND TRADEMARKS);
(f)
Article
10 (MISCELLANEOUS PROVISIONS)
| 7.4 |
Disposition
of Licensed Products on Hand.
Upon termination of this Agreement, LICENSEE
|
may
dispose of all previously made or partially made Licensed Product within
a
period of one
hundred
and twenty (120) days of the effective date of such termination provided
that
the sale of
such
Licensed Product by LICENSEE, its Sublicensees, or Affiliates shall be subject
to the terms
of
this
Agreement, including but not limited to the rendering of reports and payment
of
royalties
required
under this Agreement.
ARTICLE
8. LIMITED WARRANTY AND INDEMNIFICATION
8.1
Limited
Warranty.
(a)
UNIVERSITY warrants that it has the lawful right to grant this
license.
|
(b)
|
The
license granted herein is provided "AS IS" and without WARRANTY
OF
MERCHANTABILITY or WARRANTY OF FITNESS FOR A PARTICULAR PURPOSE
or any
other warranty, express or implied. UNIVERSITY makes no representation
or
warranty that the Licensed Product, Licensed Method or the use
of Patent
Rights will not infringe any other patent or other proprietary
rights.
|
|
(c)
|
In
no event shall UNIVERSITY be liable for any incidental, special
or
consequential damages resulting from exercise of the license granted
herein or the use of the Invention, Licensed Product, or Licensed
Method.
|
(d)
Nothing
in this Agreement shall be construed as:
|
(1)
|
a
warranty or representation by UNIVERSITY as to the validity or
scope of
any Patent Rights;
|
|
(2)
|
a
warranty or representation that anything made, used, sold or otherwise
disposed of under any license granted in this Agreement is or shall
be
free from infringement of patents of third
parties;
|
|
(3)
|
an
obligation to bring or prosecute actions or suits against third
parties
for patent infringement;
|
|
(4)
|
conferring
by implication, estoppel or otherwise any license or rights under
any
patents of UNIVERSITY other than Patent Rights as defined in this
Agreement, regardless of whether those patents are dominant or
subordinate
to Patent Rights;
|
(5)
an
obligation to furnish any know-how not provided in Patent Rights.
8.2
Indemnification.
|
(a)
|
LICENSEE
shall indemnify, hold harmless and defend UNIVERSITY, its officers,
employees, and agents; the sponsors of the research that led to
the
Invention; and the Inventor of the patents and patent applications
in
Patent Rights and their employers against any and all claims, suits,
losses, damage, costs, fees, and expenses resulting from or arising
out of
exercise of this license or any sublicense. This indemnification
shall
include, but not be limited to, any product
liability.
|
|
(b)
|
On
or before the date of the commercial distribution of the first
Licensed
Product or on the date of initiation of any human trials necessary
for FDA
approval (if required), whichever occurs first, LICENSEE, at its
sole cost
and expense, shall insure its activities in connection with the
work under
this Agreement and obtain, keep in force and maintain insurance
or an
equivalent program of self insurance as
follows:
|
|
(
1)
|
comprehensive
or commercial general liability insurance (contractual liability
included)
with limits of at least: (i) each occurrence, $1,000,000; (ii)
products/completed operations aggregate, $5,000,000; (iii) personal
and
advertising injury, $1,000,000; and (iv) general aggregate (commercial
form only), $5,000,000; and
|
|
(2)
|
the
coverage and limits referred to above shall not in any way limit
the
liability of LICENSEE.
|
|
(c)
|
LICENSEE
shall furnish UNIVERSITY with certificates of insurance showing
compliance
with all requirements. Such certificates shall: (i) provide for
thirty
(30) day advance written notice to UNIVERSITY of any modification;
(ii)
indicate that UNIVERSITY has been endorsed as an additional insured
under
the coverage referred to above; and (iii) include a provision that
the
coverage shall be primary and shall not participate with nor shall
be
excess over any valid and collectable insurance or program of
self-insurance carried or maintained by
UNIVERSITY.
|
|
(d)
|
UNIVERSITY
shall notify LICENSEE in writing of any claim or suit brought against
UNIVERSITY in respect of which UNIVERSITY intends to invoke the
provisions
of this Article. LICENSEE shall keep UNIVERSITY informed on a current
basis of its defense of any claims under this
Article.
|
7
ARTICLE
9. USE OF NAMES AND TRADEMARKS
|
9.1
|
Nothing
contained in this Agreement confers any right to use in advertising,
publicity, or other promotional activities any name, trade name,
trademark, or other designation of either party hereto (including
contraction, abbreviation or simulation of any of the foregoing).
Unless
required by law, the use by LICENSEE of the name, "The Regents
Of The
University Of California" or the name of any campus of the University
Of
California is prohibited, without the express written consent of
UNIVERSITY.
|
|
9.2
|
UNIVERSITY
may disclose to the Inventor the terms and conditions of this Agreement
upon their request. If such disclosure is made, UNIVERSITY shall
request
the Inventor not disclose such terms and conditions to
others.
|
|
9.3
|
UNIVERSITY
may acknowledge the existence of this Agreement and the extent
of the
grant in Article 2 to third parties, but UNIVERSITY shall not disclose
the
financial terms of this Agreement to third parties, except where
UNIVERSITY is required by law to do so, such as under the California
Public Records Act.
|
ARTICLE
10. MISCELLANEOUS PROVISIONS
|
10.1
|
Correspondence.
Any notice or payment required to be given to either party under
this
Agreement shall be deemed to have been properly given and
effective:
|
(a)
on
the date of delivery if delivered in person, or
(b)
five
(5) days after mailing if mailed by first-class or certified mail, postage
paid,
to the respective addresses given below, or to such other address as is
designated by written notice given to the other party.
If
sent
to LICENSEE:
OcuSense,
Inc.
▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇ #▇
▇▇▇
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention:
▇▇▇▇ ▇▇▇▇▇▇
If
sent
to UNIVERSITY:
University
of California, San Diego
Technology
Transfer & Intellectual
Property Services
▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇
▇▇
▇▇▇▇▇,
▇▇ ▇▇▇▇▇-▇▇▇▇
Attention:
Assistant Vice Chancellor
10.2
Secrecy.
|
(a)
|
"Confidential
Information" shall mean information relating to the Invention and
disclosed by UNIVERSITY to LICENSEE during the term of this Agreement,
which if disclosed in writing shall be marked "Confidential", or
if first
disclosed otherwise, shall within thirty (30) days of such disclosure
be
reduced to writing by UNIVERSITY and sent to
LICENSEE:
|
| (a) |
LICENSEE
shall:
|
|
(1)
|
use
the Confidential Information for the sole purpose of performing
under the
terms of this Agreement;
|
|
(2)
|
safeguard
Confidential Information against disclosure to others with the
same degree
of care as it exercises with its own data of a similar
nature;
|
|
(3)
|
not
disclose Confidential Information to others (except to its employees,
agents or consultants who are bound to LICENSEE by a like obligation
of
confidentiality) without the express written permission of UNIVERSITY,
except that LICENSEE shall not be prevented from using or disclosing
any
of the Confidential Information
that:
|
|
(i)
|
LICENSEE
can demonstrate by written records was previously known to
it;
|
|
(ii)
|
is
now, or becomes in the future, public knowledge other than through
acts or
omissions of LICENSEE; or
|
|
(iii)
|
is
lawfully obtained by LICENSEE from sources independent of UNIVERSITY;
and
|
|
(c)
|
The
secrecy obligations of LICENSEE with respect to Confidential Information
shall continue for a period ending five (5) years from the termination
date of this Agreement.
|
|
10.3
|
Assignability.
This Agreement may be assigned by UNIVERSITY, but is personal to
LICENSEE
and assignable by LICENSEE only with the written consent of
UNIVERSITY.
|
|
10.4
|
No
Waiver.
No
waiver by either party of any breach or default of any covenant
or
agreement set forth in this Agreement shall be deemed a waiver
as to any
subsequent and/or similar breach or
default.
|
|
10.5
|
Failure
to Perform.
In
the event of a failure of performance due under this Agreement
and if it
becomes necessary for either party to undertake legal action against
the
other on account thereof, then the prevailing party shall be entitled
to
reasonable attorney's fees in addition to costs and necessary
disbursements.
|
|
10.6
|
Governing
Laws.
THIS AGREEMENT SHALL BE INTERPRETED AND CONSTRUED IN ACCORDANCE
WITH THE
LAWS OF THE STATE OF CALIFORNIA, but the scope and validity of
any patent
or patent application shall be governed by the applicable laws
of the
country of the patent or patent
application.
|
|
10.7
|
Force
Majeure.
A
party to this Agreement may be excused from any performance required
herein if such performance is rendered impossible or unfeasible
due to any
catastrophe or other major event beyond its reasonable control,
including,
without limitation, war, riot, and insurrection; laws, proclamations,
edicts, ordinances, or regulations; strikes, lockouts, or other
serious
labor disputes; and floods, fires, explosions, or other natural
disasters.
When such events have abated, the non-performing party's obligations
herein shall resume.
|
|
10.8
|
Headings.
The headings of the several sections or paragraphs are inserted
for
convenience of reference only and are not intended to be a part
of or to
affect the meaning or interpretation of this
Agreement.
|
|
10.9
|
Entire
Agreement. This
Agreement embodies the entire understanding of the parties and
supersedes
all previous communications, representations or understandings,
either
oral or written, between the parties relating to the subject matter
hereof.
|
8
|
10.10
|
Amendments.
No
amendment or modification of this Agreement shall be valid or binding
on
the parties unless made in writing and signed on behalf of each
party.
|
|
10.11
|
Severability.
In
the event that any of the provisions contained in this Agreement
is held
to be invalid, illegal, or unenforceable in any respect, such invalidity,
illegality or unenforceability shall not affect any other provisions
of
this Agreement, and this Agreement shall be construed as if the
invalid,
illegal, or unenforceable provisions had never been contained in
it.
|
IN
WITNESS WHEREOF, both UNIVERSITY and LICENSEE have executed this Agreement,
in
duplicate originals, by their respective and duly authorized officers on
the day
and year written.
OCUSENSE
INC. THE REGENTS OF THE
UNIVERSITY
OF CALIFORNIA:
BY:
/s/
▇▇▇▇
▇▇▇▇▇▇ BY: /s/ ▇▇▇▇ ▇. ▇▇▇▇
__________________
____________________
(Signature)
(Signature)
Name:
▇▇▇▇
▇▇▇▇▇▇ Name: ▇▇▇▇ ▇. ▇▇▇▇
Title:
CEO
Title: Assistant Vice Chancellor
Technology Transfer & Intellectual
Property Services
Date:
March 12, 2003
Date:
March 7,
2003
9
EXHIBIT
A: CERTIFICATE OF INCORPORATION
OCUSENSE,
INC.
10
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12
13
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