12.1 Any notice to a Party provided pursuant to the terms of this Agreement shall be delivered either in person, mailed by registered mail (return receipt requested and postage prepaid), or transmitted by facsimile or electronic mail with operator confirmation, and addressed as indicated in Exhibit 5 attached hereto.
12.2 Notice shall be deemed effective upon the earlier of: (i) actual delivery to the Party; (ii) five (5) days after the date on which such notice was postmarked within the United States; or (iii) receipt by facsimile or other electronic means with operator confirmation. All notices given by facsimile or other electronic means shall be immediately followed by delivery in person or delivery by first class mail.
13.1 The Parties understand and agree that nothing herein shall preclude either the University or the Company from entering into sponsored research agreements or other activities with each other or with third parties that may be related to but the conduct of which are otherwise outside and independent of the Project, Project Work, and other Project activities on condition that any such sponsored research agreements or other activities are not inconsistent with the rights and obligations of the Parties to this Agreement.
14.1 Company agrees to abide by all applicable federal, state, and local laws and regulations pertaining to the management and commercial deployment of any intellectual property or other rights transferred to Company under this Agreement or under any other agreement entered into pursuant to this Agreement.
14.2 Company understands that the University is subject to the laws and regulations of the United States, including the export of technical data, computer software, laboratory prototypes and other commodities (including the Arms Export Control Act, as amended, and the Export Administration Act of 1979), and that the University’s obligations hereunder are contingent upon compliance with all applicable laws and regulations, including those for export control. Company understands that any transfer of any intellectual property or other rights to Company under this Agreement or under any other agreement entered into pursuant to this Agreement, including transfers to Company’s affiliates and permitted uses by certain third parties, may require a license from a cognizant agency of the United States Government and/or written assurances by Company that Company shall not transfer data or commodities to certain foreign countries without the prior approval of an appropriate agency of the United States government. The University neither represents that any such export license shall not be required, nor that, if required, it shall be issued.
14.3 In the event the University receives any funding from a funding agency of the U. S. government for the Project, Company understands and agrees that the intellectual property or other similar rights covered by this Agreement may be subject to the rights and limitations of U.S. Public Laws 96-517 and 98-620, 35 USC §§200-211, and various implementing regulations, including those codified at 37 CFR Part 401, known generally and collectively as the “Bayh-Dole Requirements.” In such case, the Parties agree to include, where applicable, in any application for a U.S. Patent a statement fully identifying the rights of the U.S. government under the Bayh-Dole Requirements; and Company acknowledges that the University shall be required to grant the U.S. government a worldwide, non-exclusive, royalty-free license for such invention covered by any Patent notwithstanding anything in this Agreement to the contrary.
15.0 Internal Revenue Code
15.1 The University will comply with any present or future requirements of the Internal Revenue Code and its regulations with respect to providing information that may affect the allowance of tax credits for payments made to qualified organizations for basic research. Upon request, the University will inform Company, within ninety (90) days after the close of Company’s taxable year, what proportion of payments and other support provided by Company pursuant to this Agreement were expended on basic research during the taxable year.
16.0 Sublicenses and Assignments
16.1 Except as otherwise expressly permitted herein or by the Exclusive Licensing Agreement, neither Party shall sublicense, assign, or otherwise transfer any rights, duties or obligations, other than a right to receive payment of money, conferred by this Agreement and exhibits attached hereto without the prior, written consent of the other Party. Any such attempt to sublicense, assign, or transfer by a Party without such consent shall be null and void. Any sublicenses, assignments, or transfers shall be subject to the terms of this Agreement, including the duties of confidentiality herein.
17.0 Relationship of the Parties
17.1 Each Party agrees that it will not use the name, trademark or other identifier of the other Party for any advertising, promotion, or other commercially related purpose without the express prior written consent of the other Party.
17.2 The Parties each agree and understand that they are each acting as independent contractors and nothing contained herein shall be construed to be inconsistent with such relationship or status. Under no circumstances, shall either Party be considered an agent, representative or employee of the other Party. This Agreement shall not constitute, create, nor in any way be interpreted as giving rise to any joint venture, partnership, profit-sharing, or other similar business relationship of any kind between the Parties.
18.0 Disputes; Attorney’s Fees and Legal Costs
18.1 Prior to commencing any legal action, the Parties will attempt in good faith to resolve through negotiation any dispute, claim or controversy arising out of or relating to this Agreement. Either Party may initiate such negotiations by providing written notice to the other Party specifying that this provision of this Agreement is being utilized and setting forth the subject of the dispute and the relief requested. The Party receiving such notice will respond in writing within five business (5) days with a statement of its position on and recommended solution to the dispute. If the dispute is not resolved by this exchange of correspondence, then representatives of each Party with full settlement authority shall meet at a mutually agreeable time and place in Seattle, Washington within ten business (10) days of the date of the initial notice in order to exchange relevant information and perspectives, and to attempt in good faith to resolve the dispute. If the dispute is not resolved by these negotiations, the matter will be submitted to a mutually agreeable and recognized mediation service prior to initiating legal action. Any such mediation shall be conducted in Seattle, Washington and the costs of the mediation service shall be shared equally by the Parties.
18.2 This Agreement shall be governed by and enforced according to the laws of the State of Washington, without giving effect to its or any other jurisdiction’s choice of law provisions, and the Superior Court of Washington for King County shall have exclusive jurisdiction and venue of all disputes arising under this Agreement, except that in any case where the courts of the United States shall have exclusive jurisdiction over the subject matter of the dispute, the United States District Court for the Western District of Washington, Seattle division, shall have exclusive jurisdiction and venue.
18.3 The prevailing Party in any action sought to enforce or interpret this Agreement or any provision of this Agreement shall be entitled to its reasonable attorney’s fees and costs, including any appeals thereon, as determined by a court in conjunction with any such legal proceeding.
19.0 Miscellaneous
19.1 No waiver or modification of this Agreement shall be valid or enforceable unless it is in writing and signed by both Parties. The waiver by any Party of the other Party’s default under or breach of any provision of this Agreement shall not operate or be construed as a waiver by a Party of any subsequent default under or breach of this Agreement by the other Party.
19.2 This Agreement, the exhibits attached hereto, and the Exclusive Licensing Agreement, including the exhibits attached thereto, embody the entire understanding of the parties and supersede all previous communications, representations, or understandings, either oral or written, between the Parties relating to the subject matter hereof.
19.3 If any of the provisions of this Agreement shall be determined to be illegal or unenforceable by a court of competent jurisdiction, the other provisions shall remain in force and effect.
19.4 This Agreement shall inure to the benefit of and be binding upon each Party’s successors and assigns.
19.5 Nonperformance by a Party, other than payment of any amounts due hereunder by Company, shall not operate as a default under or breach of the terms of this Agreement to the extent and for so long any such nonperformance is due to: strikes or other labor disputes; prevention or prohibition by law; the loss or injury to products in transit; an Act of God; or war or other cause beyond the control of such Party.
19.6 The headings herein are for convenience and reference only and shall not govern the interpretation of any of the terms of this Agreement.
The University and Company, each agreeing to be bound hereby, do hereby assent to the above Agreement by the signatures of their duly-authorized representatives.
The University of Washington | Lumera Corporation |
| a Washington Corporation |
By: | /s/ Carol Zuiches
| By: | /s/ Todd R. McIntyre
|
Name: | Carol Zuiches
| Name: | Todd R. McIntyre
|
Title: | Director of Grant and Contract Services
| Title: | Vice President
|
Date: | October 20, 2000
| Date: | October 20, 2000
|
| | | | | | | | |