1
EXHIBIT 10.1
LICENSE AGREEMENT
This Agreement is made effective this 6th day of September, 2000, by and
between Temple University - Of The Commonwealth System of Higher Education, a
corporation organized and existing under the laws of the Commonwealth of
Pennsylvania, having a principal place of business at Broad Street and
Montgomery Avenue, Philadelphia, Pennsylvania and Nutraceutix, Inc., a
corporation organized and existing under the laws of the State of Delaware,
having a principal place of business at 8340 - 154th Avenue N.E., Redmond,
Washington 98052.
WHEREAS, Temple University - Of The Commonwealth System of Higher
Education is the owner of the entire interest in United States Patent
Application 09/037,096 and PCT Application PCT/US99/04508; and
WHEREAS, Nutraceutix, Inc., desires to obtain an exclusive worldwide
license under the aforementioned patent applications, patents and technical
information related thereto, for application thereof to dietary supplements and
pharmaceutical products, including over-the-counter products, prescription
drugs, OTC drugs and generic drugs;
NOW, THEREFORE, in consideration of the premises and of the covenants
and obligations hereinafter set forth, and intending to be legally bound, the
parties hereby agree as follows:
1. DEFINITIONS
The following definitions shall apply throughout this Agreement:
1.1 "AFFILIATE" shall mean each and every business entity controlling,
controlled by or under common control with COMPANY for the purposes of
manufacture, use or sale of LICENSED PRODUCT. For purposes of this definition,
"control" shall mean ownership, directly or indirectly, of at least fifty
percent (50%) of the voting stock.
1.2 "ANNIVERSARY" shall mean an anniversary of the EFFECTIVE DATE.
1.3 "COMPANY" shall mean Nutraceutix, Inc., and its AFFILIATES.
1.4 "CONFIDENTIAL INFORMATION" shall mean all information disclosed or
samples supplied by one party to the other pursuant to this Agreement. However,
CONFIDENTIAL INFORMATION shall not include information which: (i) was known to
the receiving party prior to the date of disclosure by the disclosing party or
is developed independently of information received from the disclosing party by
those who have not had access to this information; or (ii) is lawfully received
in good faith at any time by the receiving party from others lawfully in
possession of the same and having the right to disclose the same; or (iii) is,
as of the date of receipt, in the public domain or subsequently enters the
public domain other than by reason or omissions of the receiving party; or (iv)
is required to be disclosed by law, rule of court or regulation.
1.5 "EFFECTIVE DATE" shall mean the date first above written as the
effective date of this Agreement.
1.6 "INVENTOR" shall mean Reza Fassihi of the TEMPLE faculty.
12
2
1.7 "LICENSED PRODUCT" shall mean any PRODUCT the manufacture, use or
sale of which would infringe, induce infringement of, or contribute to the
infringement of at least one VALID CLAIM contained in a patent application
included in PATENT RIGHTS if that VALID CLAIM were contained, instead, in an
issued patent not included in PATENT RIGHTS.
1.8 "NET SALES" shall mean the gross receipts from the SALE of LICENSED
PRODUCT by COMPANY or by its sublicensees less deductions for: (i)
transportation charges, including insurances, sales and excise taxes and duties
paid; (ii) normal and customary trade, quantity and cash discounts allowed;
(iii) sales commissions; and (iv) allowances on account of rejection or return
by customers.
1.9 "PATENT RIGHTS" shall mean United States Patent Application
09/037,096 and PCT application PCT/US99/04508, and any foreign counterparts
thereof, or any continuations, continuations-in-part, divisions, re-issues,
additions, renewals or extensions thereof and any patents issued therefrom.
1.10 "PRODUCT" shall mean: (i) any dietary supplement (as defined in the
1994 Dietary Supplement and Health Education Act)(referred to herein as a
"SUPPLEMENT"); (ii) any drug which can be purchased by the general public
without a prescription (referred to herein as "OTC DRUG"); and (iii) any
prescription drug (whether existing at the time of this Agreement or yet to be
discovered). If any item which is classified on the date of this Agreement as a
SUPPLEMENT, an OTC DRUG or a prescription drug, is subsequently reclassified
otherwise, such item shall nevertheless remain a SUPPLEMENT, an OTC DRUG or a
prescription drug (as the case may be) for all purposes under this Agreement.
1.11 "SALE" shall mean any transaction for which consideration is
received for the sale, lease, license, transfer or other disposition of LICENSED
PRODUCT by COMPANY or by its sublicensees.
1.12 "TECHNICAL INFORMATION" shall mean any CONFIDENTIAL INFORMATION of
a technical nature relating to LICENSED PRODUCT, which is in the possession of
TEMPLE as of the effective date of this Agreement, and which is necessary or
useful to COMPANY in furtherance of the development, manufacture or marketing of
LICENSED PRODUCT.
1.13 "TEMPLE" shall mean Temple University - Of the Commonwealth System
of Higher Education.
1.14 "VALID CLAIM" shall mean a claim of a patent application or patent,
which claim has not expired and has not been held unenforceable, unpatentable or
invalid by unappealable decision of a court or other governmental agency of
competent jurisdiction.
2. CONFIDENTIALITY
2.1 CONFIDENTIAL INFORMATION disclosed in documentary form shall be
marked "Confidential". Oral discussions of CONFIDENTIAL INFORMATION shall be
reduced to writing by the disclosing party and a copy marked "Confidential"
provided to the receiving party within thirty (30) days of the disclosure date.
2.2 The receiving party shall hold all CONFIDENTIAL INFORMATION in
strict confidence for a period of five (5) years from the disclosure date; not
use said CONFIDENTIAL INFORMATION except as provided in this Agreement; and not
disclose, directly or indirectly, said CONFIDENTIAL INFORMATION to others except
with the prior written consent of the disclosing party.
13
3
2.3 The receiving party shall, upon request by the disclosing party,
promptly return all written materials or samples of tangible property received
hereunder, as well as all summaries thereof and notes pertaining thereto, with
the exception that one copy of said written materials may be retained by the
receiving party solely for archival purposes.
2.4 Notwithstanding any other provision of this Agreement, it is
recognized by COMPANY that TEMPLE, through the INVENTOR, shall have the right to
publish the results of research concerning LICENSED PRODUCT. However, TEMPLE and
the INVENTOR agree to notify COMPANY in writing of any such proposed publication
ninety (90) days before submission. COMPANY may request deletion of sensitive
information from the proposed publication, and TEMPLE agrees to give good faith
consideration to such a request.
2.5 The parties shall keep the financial terms of this Agreement set
forth in Section 4 confidential, except to the extent disclosure thereof may be
required by applicable securities laws or otherwise by law. The parties shall be
free to disclose to third parties the existence of this Agreement and the
nonfinancial terms of this Agreement.
2.6 Promptly after the execution of this Agreement, TEMPLE shall
delivery all currently existing TECHNICAL INFORMATION to COMPANY. Thereafter
TEMPLE shall deliver to COMPANY all additional TECHNICAL INFORMATION promptly
after it is developed or obtained by TEMPLE. In addition, TEMPLE shall deliver
to COMPANY from time to time other data, materials and information relating to
the LICENSED PATENT which it develops or obtains and which is necessary or
useful to COMPANY in furtherance of the development, manufacture or marketing of
LICENSED PRODUCT.
3. GRANT OF LICENSE
3.1 TEMPLE grants to COMPANY a world-wide exclusive license under PATENT
RIGHTS and TECHNICAL INFORMATION, with the right to grant sublicensees, to make,
have made, use, sell, offer for sale, export, import and otherwise deal with
LICENSED PRODUCT. This license shall be perpetual unless and until terminated,
in whole or in part, in accordance with the provisions of this Agreement.
3.2 Notwithstanding the preceding license grant, TEMPLE shall retain
rights to make, have made, use and import LICENSED PRODUCT royalty-free for
non-commercial educational and research purposes only, and shall be free to
grant these rights to other non-profit educational and research institutions.
3.3 The parties acknowledge that inventions in PATENT RIGHTS may have
resulted from United States Government funding, and agree that their rights and
obligations under this Agreement shall be subject to TEMPLE's obligations to the
United States Government, if any, which arise out of the receipt by TEMPLE of
research funding from the United States Government. In particular, COMPANY
agrees that LICENSED PRODUCT sold in the United States under this Agreement
shall be manufactured substantially in the United States.
4. PAYMENTS
4.1 In consideration of the license granted to COMPANY under the terms
of this Agreement, COMPANY shall pay to TEMPLE royalties as follows:
14
4
(a) a royalty of thirty cents ($.30) for each one thousand
(1,000) tablets of LICENSED PRODUCT which is a SUPPLEMENT and which is sold by
COMPANY or by its sublicensees; and
(b) a royalty of forty-five cents ($.45) for each one thousand
(1,000) tablets of LICENSED PRODUCT which is an OTC DRUG which is sold by
COMPANY or by its sublicensees; and
(c) a royalty equal to four percent (4%) of NET SALES of any
LICENSED PRODUCT which is a prescription drug and which is sold by COMPANY or by
its sublicensees.
4.2 In further consideration of the license granted to COMPANY under the
terms of this Agreement, COMPANY shall pay to TEMPLE, within thirty (30) days
after the EFFECTIVE DATE, a non-refundable license fee of fifty thousand dollars
($50,000.00), which license fee payment shall not be creditable against any
other payments due to TEMPLE under this Agreement.
4.3 In further consideration of the license granted to COMPANY under the
terms of this Agreement, COMPANY shall pay to TEMPLE, within thirty (30) days of
the first ANNIVERSARY and annually thereafter, a non-refundable license
maintenance fee regardless of or irrespective of actual NET SALES, which license
maintenance fee payment may be credited against payments due to TEMPLE under
Paragraph 4.1 during the same calendar year, with no carry-over of unused credit
to subsequent calendar years. The amount of the license maintenance fee payment
shall be twenty-five thousand dollars ($25,000.00), no more than one-half (1/2)
of which may be credited against payments due to TEMPLE under Sub-Paragraphs
4.1(a) and 4.1(b) pertaining to SUPPLEMENTS and OTC DRUGS, and no more than
one-half (1/2) of which may be credited against payments due to TEMPLE under
Sub-Paragraphs 4.1(c) pertaining to prescription drugs.
4.4 In further consideration of the license granted to COMPANY under the
terms of this Agreement, COMPANY shall pay TEMPLE a royalty equal to fifty
percent (50%) of any license fee or similar payment received by COMPANY from any
sublicensee under the LICENSE in consideration of entering into such sublicense,
not including: (i) any royalty or fee received by COMPANY on account of SALES of
LICENSED PRODUCTS or (ii) any payment received by COMPANY as reimbursement for
research and/or development costs; provided that, after payment of the first
royalty pursuant to this Paragraph 4.4, each subsequent royalty pursuant to this
Paragraph 4.4 shall be reduced by an amount equal to COMPANY'S reasonable,
unreimbursed, out-of-pocket research and/or development costs incurred in
connection with developing Licensed Products, which costs include, and are not
limited to: (i) cost of formulation development, (ii) purchase price of raw
materials, including active ingredients, for formulation development, (iii)
labor costs for research and/or development of a Licensed Product, (iv) cost of
research and development compliance and documentation for the U.S. Food and Drug
Administration or similar governmental agencies, (v) cost of creating pilot
batches for bench testing (i.e., for testing friability, hardness, blend
uniformity, etc.), (vi) cost of dissolution testing, (vii) cost of pilot
stability testing according to ICH guidelines, (viii) cost of development and
validation of analytic methods, (ix) cost of development of master formulation
documentation, (x) cost of development of indented bill of materials, (xi) cost
of vendor certification for all raw materials, (xii) cost of cGMP audits of
manufacturing sites, (xiii) cost of bioequivalence and clinical trials, (xiv)
cost of preparing technical files for sale or license to a pharmaceutical
licensee and (xv) costs incurred for subcontractors involved in developing
Licensed Products.
4.5 Royalty payments pursuant to Paragraph 4.1 for SALES in each country
will commence with the first unit of LICENSED PRODUCT sold by COMPANY or by its
sublicensees in such country
15
5
and will end coincident with the expiration date of the last-to-expire issued
patent within PATENT RIGHTS in such country covering such LICENSED PRODUCT.
5. STATEMENTS AND REMITTANCES
5.1 COMPANY shall keep and shall require its sublicensees to keep
complete and adequate records relating to the manufacture and SALE of LICENSED
PRODUCT.
5.2 Within sixty (60) days after the close of each calendar quarter,
COMPANY shall remit to TEMPLE a statement of NET SALES by COMPANY and by its
sublicensees on account for such quarter, which statement shall be accompanied
by the payment due to TEMPLE pursuant to Paragraph 4.1 on account of NET SALES
for such quarter.
5.3 COMPANY shall use commercially reasonable efforts to obtain from
each of its sublicensees verified, and if available audited, financial
statements setting forth the amount of sales of LICENSED PRODUCT by each such
sublicensee ("Sublicensee Reports"). The financial statements of COMPANY and the
Sublicensee Reports will be audited annually by an independent certified public
accountant. TEMPLE shall have the right to employ, at its own expense, a
qualified accountant of its own selection to whom COMPANY shall make no
unreasonable objection, to examine the Sublicensee Reports and the books and
records of COMPANY relating to sales of LICENSED PRODUCT by COMPANY for the
purpose of verifying the amount of royalty payments due. Such examination of the
Sublicensee Reports and the books and records of COMPANY shall take place during
regular business hours during the term of this Agreement and for two (2) years
after its termination; provided, however, that such an examination shall not
take place more than once a year and shall not cover records for more than the
preceding three (3) years, and provided that such accountant shall report to
TEMPLE only as to the accuracy of the royalty statements and payments. If such
accountant shall find an underpayment to TEMPLE, presentation of a written
statement substantiating the underpayment will be provided to COMPANY. If the
discrepancy relates to information contained in a Sublicensee Report, COMPANY
shall use commercially reasonable efforts to arrange for an audit of subject
sublicensee by TEMPLE. If COMPANY is not in agreement with the findings of the
qualified accountant selected by TEMPLE, then COMPANY shall so notify TEMPLE in
writing within thirty (30) days of receipt by COMPANY of said findings (or in
the case of an audit of a sublicensee, within thirty (30) days of receipt by
COMPANY of the findings regarding the audit of the sublicensee), in which case
the parties will jointly appoint, within a further period of thirty (30) days,
an independent qualified accountant to validate, at COMPANY's expense, TEMPLE's
accountant's findings, and the decision of said independent account shall be
final. If said independent accountant verifies that an underpayment has
occurred, the amount due and interest (accruing at the prevailing Prime Rate
from the date payment was due through the date of actual payment to TEMPLE)
shall be paid to TEMPLE within thirty (30) days. Should such underpayment
represent more than five percent (5%) of the royalties due TEMPLE, COMPANY shall
reimburse TEMPLE for the cost of the examination by TEMPLE's accountant which
disclosed such underpayment.
5.4 All payments due to TEMPLE under this Agreement shall be made in
United States dollars and shall be sent by COMPANY to TEMPLE to the attention of
"Business Manager" at the address shown in Paragraph 13.5. However, TEMPLE shall
have the right, upon giving written notice to COMPANY, to receive royalty
payments within a particular country in the local currency if permitted by law.
5.5 If COMPANY fails to make any payment due to TEMPLE within the time
prescribed by the terms of this Agreement, a penalty equal to one percent (1%)
of the amount due and unpaid on the first day of each calendar month shall be
added to the amount due. However, the provisions of this
16
6
Paragraph 5.5 shall not apply to any underpayment of royalties which is
uncovered by an audit of the books of COMPANY or of its sublicensees pursuant to
Paragraph 5.2.
6. REPRESENTATIONS
6.1 TEMPLE represents that it has the right to enter into this Agreement
and to make the herein grant of license under PATENT RIGHTS and TECHNICAL
INFORMATION. TEMPLE further represents that it is the sole and exclusive owner
of PATENT RIGHTS and TECHNICAL INFORMATION, all of which are free and clear of
any lien, charges and encumbrances.
6.2 TEMPLE makes no warranty that exercise by COMPANY or its
sublicensees of the rights granted herein will not infringe any patents owned by
a third party, or that any patent application within PATENT RIGHTS will issue as
a patent.
6.3 COMPANY warrants that, prior to the execution of this Agreement, it
has not negotiated or in any manner discussed, whether formally or informally,
with any third party any agreement or other arrangement, including but not
limited to research or consulting agreements, which provides for any portion of
the amounts payable to TEMPLE pursuant to Section 4 of this Agreement, or any
consideration which would reduce the amounts payable to TEMPLE pursuant to
Section 4 of this Agreement, to be paid in any form, including but not limited
to amounts of money or shares of stock, to any INVENTOR, any INVENTOR's spouse
or other relative, or any entity in which any of them has a financial interest.
7. PATENT PROSECUTION AND LITIGATION
7.1 TEMPLE, in consultation with COMPANY but in TEMPLE's sole
discretion, shall diligently prosecute all patent applications and maintain all
patents within PATENT RIGHTS, to the extent permitted by law, in all countries
designated in writing by COMPANY during the term of this Agreement. Except as
provided in Paragraph 7.3, COMPANY shall be responsible for all costs and
expenses incurred by TEMPLE, both prior to and during the term of this
Agreement, in the preparation, filing and prosecution of all patent applications
within PATENT RIGHTS, and in the maintenance of all patents with PATENT RIGHTS.
Such costs and expenses shall not be creditable against any other payments due
to TEMPLE under this Agreement.
7.2 COMPANY shall make all payments due to TEMPLE pursuant to Paragraph
7.1 within thirty (30) days of receipt of detailed invoices therefore supported
by copies of the subject receipts and invoices or such other supporting
documentation as COMPANY may reasonably request. TEMPLE, in its sole discretion,
may elect to have its patent counsel submit such invoices directly to COMPANY,
in which case COMPANY shall pay TEMPLE's patent counsel directly.
7.3 In the event COMPANY notifies TEMPLE in writing that it will stop
paying the costs and expenses with respect to any patent application or patent
in any country, TEMPLE, at its option, may assume the obligation of supporting
such patent application or patent in such country, and COMPANY's rights and
obligations thereto under this Agreement shall terminate in such country.
Termination of COMPANY's rights and obligations with respect to any patent
application or patent in any country shall in no way affect the rights and
obligations of COMPANY to the same patent application or patent in any other
country.
7.4 TEMPLE may file patent applications in countries other than those
designated by COMPANY; provided, however, that TEMPLE shall notify COMPANY in
writing of any such filing within thirty (30) days of the filing date. If,
within thirty (30) days of its receipt of such notification, COMPANY fails to
inform TEMPLE in writing that it wishes to support such applications in such
17
7
countries, TEMPLE shall bear all the costs associated with such additional
patent application filings, and such applications in such countries and any
patents granting therefrom shall not be included within PATENT RIGHTS. TEMPLE
shall then be free to license such patents and patent applications in such
countries to others.
7.5 COMPANY, at is option, may defend any claim, made by others, of
patent infringement resulting from the manufacture, use, sale or other
disposition of LICENSED PRODUCT, whether such claim shall be made against TEMPLE
or COMPANY, and if COMPANY defends such claim, COMPANY shall bear all costs and
expenses, including reasonable attorneys' fees, incurred in connection with any
such claim. These costs and expenses will be a credit against fifty percent
(50%) of royalty payments due to TEMPLE on account of NET SALES of said LICENSED
PRODUCT, pursuant to Paragraph 4.1, in each year during the term of this
Agreement until fully offset. Each party to this Agreement agrees that it shall
notify the other party in writing in the event any claim of infringement is made
against that party.
7.6 In the event either party becomes aware of any actual or threatened
infringement of PATENT RIGHTS in any country, that party shall promptly notify
the other party in writing. COMPANY shall have the first right to bring an
infringement action against the infringer and to use TEMPLE's name if legally
required in connection therewith. If COMPANY does not proceed with a particular
patent infringement action or attempt to sublicense the infringer within ninety
(90) days of notification, TEMPLE, after notifying COMPANY in writing, shall be
entitled to proceed against such infringement at its own expense, through
counsel of its choice. The party conducting such suit shall have full control
over its conduct. In any event, TEMPLE and COMPANY shall assist one another and
cooperate in any such litigation. TEMPLE and COMPANY may also jointly
participate in any infringement action if both parties agree to do so in writing
in advance, and set forth the basis for sharing of expenses.
7.7 The amount of any recovery resulting from any litigation to enforce
the PATENT RIGHTS or settlement thereof ("Recovery") shall first satisfy the
attorneys' fees and costs incurred by the enforcing party in such litigation
("Fees and Costs"); provided, however, that, if COMPANY is the enforcing party
and a royalty reduction was applied pursuant to Paragraph 7.5 ("Royalty
Reduction"), then TEMPLE shall receive from the Recovery an amount calculated by
dividing the Royalty Reduction by the Fees and Costs and multiplying the result
by the Recovery. Any Recovery in excess of Fees and Costs shall first satisfy
royalty payments due to TEMPLE, with any remaining balance to the enforcing
party. Each party shall always have the right to be represented by counsel of
its choice and at its own expense in any suit instituted by another for
infringement. If the parties have agreed to participate jointly in an
infringement action, any recovery in excess of satisfying the parties' attorney
fees, costs of the litigation and payment of the royalty due to TEMPLE on
account of the infringement, shall be allocated to the parties in the same
proportion as the sharing of the litigation expenses.
8. INDEMNIFICATION
8.1 COMPANY agrees to indemnify, hold harmless, and defend TEMPLE, its
trustees, officers, employees and agents against any and all claims, excluding
claims stemming from TEMPLE's use of LICENSED PRODUCT as outlined in Paragraph
3.2, including fees and costs arising out of the exercise of any rights granted
under this Agreement, without limiting the generality of the foregoing, against
any damages, losses or liabilities whatsoever including but not limited to death
or injury to person or damage to property arising from the commercial sale and
clinical research of LICENSED PRODUCT by COMPANY, its sublicensees or any
customers of any of them in any manner whatsoever. TEMPLE shall give COMPANY
written notice of any claim(s) related to LICENSED PRODUCT within thirty (30)
18
8
days, and TEMPLE shall reasonably cooperate with COMPANY and its insurance
carrier in the defense of any such claim(s).
8.2 In addition to the foregoing, COMPANY shall maintain, during the
period that any LICENSED PRODUCT is sold or otherwise made available to others
pursuant to this Agreement, Commercial Liability Insurance, including Product
Liability Insurance, with a reputable and financially secure insurance carrier()
to cover the activities of COMPANY and its sublicensees, if any, contemplated by
this Agreement for minimum limits of two million dollars ($2,000,000.00) per
occurrence. Such insurance shall name TEMPLE, its trustees, officers, employees,
and agents as additional insureds. COMPANY shall furnish a Certificate of
Insurance, upon request, evidencing coverage of two million dollars
($2,000,000.00) with thirty (30) days of written notice of cancellation or
material change to TEMPLE. COMPANY's insurance shall be written to cover claims
incurred, discovered, manifested, or made during the term, or after the
expiration, of this Agreement. COMPANY shall at all times comply, through
insurance or self-insurance, with all statutory workers' compensation and
employers' liability requirements covering any and all employees with respect to
activities performed under this Agreement.
9. SUBLICENSEES
9.1 COMPANY shall have the right to enter into sublicense agreements,
provided that all applicable material terms of this Agreement are incorporated
into such sublicense agreements to provide for the protection of TEMPLE and its
trustees, officers, employees and agents, and provided further that each
sublicensee is required to carry appropriate insurance and indemnify TEMPLE and
COMPANY for claims arising from breach of the sublicense or such sublicensee's
products, and provided further that COMPANY remains primarily liable for its
obligations under this Agreement. A copy of any sublicense agreement shall be
provided to TEMPLE for its review and approval prior to execution, which
approval shall not be unreasonably withheld or delayed. In the event TEMPLE
fails to deliver to COMPANY a written response to a request for approval of a
sublicense under this Agreement within thirty (30) days of the date of the
request, the subject sublicensee shall be automatically approved for all
purposes under this Agreement.
10. ASSIGNMENT
10.1 Neither party may assign this Agreement, in whole or in part,
without the written consent of the other, except if such assignment occurs in
connection with the sale of all or substantially all of the business and assets
of the assigning party.
11. TERMINATION
11.1 This Agreement may be terminated with respect to any patent
application or patent in any country at any time by mutual written consent of
the parties.
11.2 COMPANY may, in COMPANY's sole discretion and for any reason
whatsoever, terminate this Agreement in its entirety or only with respect to any
patent application or patent with PATENT RIGHTS in any country by giving TEMPLE
ninety (90) days' prior written notification thereof. In addition, COMPANY may
terminate this Agreement by giving TEMPLE sixty (60) days' prior written notice
upon material breach by TEMPLE of any material provision of this Agreement,
unless such breach is cured within the period of such notice.
19
9
11.3 TEMPLE may terminate this Agreement by giving COMPANY three (3)
months' prior written notice upon material breach of any material provision of
this Agreement by COMPANY, unless such breach is cured within the period of such
notice. However, the notice period shall be only thirty (30) days for any breach
by COMPANY for non-payment of moneys due TEMPLE under this Agreement.
11.4 This Agreement shall immediately terminate, without notice, if
COMPANY breaches the same material provision of this Agreement three (3) times
in the same calendar year, without regard to whether a cure was effected.
11.5 This Agreement shall immediately terminate if either party is
adjudicated bankrupt, files a voluntary petition in bankruptcy, makes or
executes an assignment for the benefit of creditors, is liquidated or dissolved,
or a receiver, trustee, liquidator, sequestor or other judicial representative
is appointed for either party or its property. In such event, that party shall
execute any documents that are necessary to assign or transfer all interests
granted hereunder.
11.6 Upon termination of this Agreement, TEMPLE shall have the right to
retain any amounts already paid by COMPANY under this Agreement, and COMPANY
shall pay to TEMPLE all amounts accrued which are then due or which become due
based on the SALE of LICENSED PRODUCT, manufactured or produced prior to the
effective date of termination.
11.7 The provisions of Article 2 (entitled CONFIDENTIALITY) and Article
8 (entitled INDEMNIFICATION) shall survive the termination of this Agreement.
12. PATENT MARKING
12.1 COMPANY agrees to mark or have marked all LICENSED PRODUCT sold by
COMPANY or by its sublicensees under this Agreement in accordance with the
statutes of the United States and countries and territories relating to the
marketing of patented articles in which any LICENSED PRODUCT covered by a
granted patent is marked.
13. MISCELLANEOUS
13.1 This Agreement shall be construed and the respective rights of the
parties hereto determined according to the substantive laws of the Commonwealth
of Pennsylvania, notwithstanding the provisions governing conflict of laws under
such Pennsylvania law to the contrary. The parties agree that any dispute
arising out of this Agreement may be resolved by recourse to the courts of the
Commonwealth of Pennsylvania or the United States District Court for the Eastern
District of Pennsylvania.
13.2 If any provision of this Agreement is held to be invalid or
unenforceable under the laws of any jurisdiction of the parties, all other
provisions shall nevertheless continue in full force and effect.
13.3 This Agreement constitutes the entire agreement among the parties
pertaining to LICENSED PATENT and supersedes all previous arrangements, whether
written or oral. Any amendment or modification to this Agreement shall be made
in writing signed by both parties.
13.4 Time is of the essence under this Agreement.
20
10
13.5 Notices and payments to the parties shall be addressed as follows:
To TEMPLE: Office of Technology Transfer
Temple University (083-45)
1601 North Broad Street, Room 406
Philadelphia, Pennsylvania 19122-6099
To COMPANY: Nutraceutix, Inc.
Attention: President
8340 - 154th Ave. N.E.
Redmond, Washington 98052
Either party may change its address for notice by giving notice to the other in
the manner herein provided. Any notice required or provided for by the terms of
this Agreement shall be in writing and sent by registered or certified mail,
return receipt requested, postage prepaid and properly addressed in accordance
with the paragraph above. The effective date of notice shall be the actual date
of receipt.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives as of the date first written
above.
FOR TEMPLE UNIVERSITY - OF THE COMMONWEALTH SYSTEM OF HIGHER EDUCATION:
By: /s/ Martin S. Dorph Date: September 27, 2000
------------------------------------ ---------------------------
Martin S. Dorph
Vice President, Chief Financial Officer and Treasurer
By: /s/ David T. Howard Date: June 9, 2000
------------------------------------ ---------------------------
David T. Howard
President & CEO
21