Exhibit 10.66
RESTATED TECHNOLOGY RIGHTS AGREEMENT
This Restated Technology Rights Agreement (the "AGREEMENT") is made
effective as of March 1, 2000 (the "EFFECTIVE DATE"), by and between Calypte
Biomedical Corporation (the "COMPANY"), a California corporation whose
address is 1265 Harbor Bay Parkway, Alameda, California 94502, and Howard B.
Urnovitz, Ph.D. (the "SCIENTIST") whose office is at 1440 Fourth Street,
Berkeley, California 94710. This Agreement amends and restates in its
entirety, as of March 1, 1997, that certain Technology Rights Agreement dated
as of March 1, 1997 by and between the Company and the Scientist (the
"ORIGINAL AGREEMENT").
RECITALS
WHEREAS, at the Effective Date the Scientist serves, and has served
since March 1, 1997, in the capacity of Chief Scientific Officer of the
Company; and
WHEREAS, the Scientist may develop certain technology during the
time he is in the employment of the Company and which technology may not
already have been assigned to the Company, without royalty and under a
separate employee invention assignment agreement pursuant to the Scientist's
relationship with the Company as an employee, or otherwise already assigned
pursuant to Section 2.1 hereof, which the Company may desire to commercialize
under a written agreement to be negotiated between the Company and the
Scientist as set forth herein;
WHEREAS, the parties desire to hereby amend and restate the Original
Agreement in its entirety to clarify certain rights and obligations of the
parties from and after March 1, 1997 as provided herein;
NOW, THEREFORE, in consideration of the premises and the mutual
agreements and undertakings herein set forth, the Company and the Scientist
hereby agree as follows:
1. DEFINITIONS.
Whenever used in this Agreement, the following terms will
have the following meanings:
1.1 "CONFIDENTIAL INFORMATION" means all confidential
or propriety information of the Scientist or the Company disclosed by one of
them to the other in writing and reasonably identified in writing as
confidential or proprietary, or reduced to writing, and so identified, within
thirty (30) days after an oral disclosure, by either party to the other in
connection with this Agreement. Confidential Information will not include:
(a) information which is or which becomes publicly known through lawful
means; or (b) information which is lawfully disclosed by the disclosing
party, or by a third party who rightfully possesses the information, to
others or the other party without confidential or proprietary restriction.
1.2 "SCIENTIST" means Howard B. Urnovitz, Ph.D. and
any students or employees operating under his direct supervision rights to
whose work belong, by written agreement or otherwise, to him.
1.3 "FIELD" means any urine-based medical diagnostic
test.
1.4 "DIAGNOSTIC TECHNOLOGY" means any information,
inventions, and discoveries made, conceived, derived, or otherwise reduced to
practice by the Scientist related to the Field.
1.5 "NET SALES" means total revenues received from
sales of products or services to customers less any quantity discounts,
rebates, sales taxes, and allowance for bad debts and returns.
2. ASSIGNMENT OF CERTAIN PATENT RIGHTS; RIGHTS OF THE
SCIENTIST TO EXECUTE AND DELIVER THIS AGREEMENT; EFFECT OF OTHER ASSIGNMENT
AGREEMENTS.
2.1 ASSIGNMENT OF CERTAIN PATENT RIGHTS. The Scientist
hereby acknowledges that the patents or patent applications listed on
APPENDIX A attached hereto and incorporated herein by reference have been
assigned by the Scientist to the Company effective as of March 1, 1997 under
the Original Agreement, and that such assignment is irrevocable and
unaffected by the amendment and restatement of the Original Agreement as
effected hereby, and agrees and confirms that any products or services that
have been or may be developed by the Company based upon such patents or
patent applications are the property of the Company and are not subject to
the provisions of Sections 2 and 3 hereof.
2.2 RIGHTS OF THE SCIENTIST TO EXECUTE AND DELIVER
THIS AGREEMENT. The Scientist hereby represents and warrants to the Company
that, from and after March 1, 1997, and as of the Effective Date, he (a) has
full right and power to execute and deliver this Agreement, and has not
assigned or otherwise transferred to any third party any rights that have
been, or may be, assigned to the Company pursuant to this Agreement, and (b)
is not subject to nor a party to any agreement or legal order or constraint
that would be violated by his execution and delivery and performance of this
Agreement.
2.3 EFFECT OF OTHER ASSIGNMENT AGREEMENTS. This
Agreement will not govern the assignment by the Scientist to the Company of
any intellectual property rights during his employment by the Company which
assignment is otherwise the subject of a written employee invention
assignment agreement between the Company and the Scientist in his capacity as
an employee of the Company, and which assignment will be governed by the
terms of such other agreement(s), if any.
3. TERM.
The term of this Agreement will be from and including March
1, 1997 through and including the earliest of (a) the date agreed in writing
by the Company and the Scientist, or (b) the date of the Scientist's death,
or (c) 5:00 p.m. California time on March 1, 2007; provided that upon any
termination hereof, except as may be otherwise specifically agreed in writing
by the Company and the Scientist or their permitted successors, assigns or
legal representatives, the rights of the parties accrued prior to the date of
such termination, and the provisions of Sections 4 through 9 hereof will
survive any such termination.
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4. FIRST RIGHT OF REFUSAL.
During the term of this Agreement, the Scientist will
promptly disclose in writing to the Company, in commercially reasonable
detail, any Diagnostic Technology. Such disclosure will be considered to be
Confidential Information of the Scientist. The Company will have sixty (60)
days from and including the date of the Company's receipt of such disclosure
to express in writing to the Scientist the Company's interest in obtaining
from the Scientist an exclusive, worldwide license to practice, make or have
made, use, sell, distribute, and license to others, any invention or
discovery made by the Scientist within the Field covered by such disclosure.
Any such written expression of interest by the Company to the Scientist will
be considered to be Confidential Information of the Company. If by the end of
such 60-day period the Company has not delivered to the Scientist the
Company's written expression of such interest, the Company will have no
further rights to the Diagnostic Technology covered by such particular
disclosure, and the Scientist may thereafter enter into such agreement or
agreements with such third party or parties as he desires, on such terms as
he desires, with respect to such relevant Diagnostic Technology. If the
Company does, within such 60-day period, deliver to the Scientist such
written expression of the Company's interest in the Diagnostic Technology so
disclosed, the Scientist and the Company will enter into a binding license
agreement (each a "DIAGNOSTIC TECHNOLOGY LICENSE AGREEMENT"), having the
terms set forth in Section 5 hereof, within ninety (90) days after the date
such written expression of interest is delivered by the Company to the
Scientist.
5. TERMS OF DIAGNOSTIC TECHNOLOGY LICENSE AGREEMENT(S).
Each Diagnostic Technology License Agreement will contain
customary and commercially reasonable provisions customary for the license of
medical diagnostic technology in the United States, and will provide that, as
consideration for the grant of an exclusive, worldwide license in perpetuity
to the relevant Diagnostic Technology by the Scientist to the Company
thereunder, the Company will pay to the Scientist or his assignee as will be
specified in such Diagnostic Technology License Agreement, (a), as a license
fee, a one-time cash payment equal to the total documented direct costs
incurred by the Scientist or on his behalf related to the development of the
licensed Diagnostic Technology, and (b) a running royalty, paid quarterly
within forty-five (45) days after the end of the relevant quarter, equal to
five percent (5%) of Net Sales of the Company from any products or services
incorporating such Diagnostic Technology.
6. TITLE TO CERTAIN INVENTIONS, DISCOVERIES AND PATENTS.
Unless otherwise agreed to by both parties, any invention,
discoveries or patent rights made, conceived, derived, or otherwise reduced
to practice by the Scientist, will be the property of the Scientist or his
assignees subject to the rights of the Company under Sections 4 and 5 hereof
with respect thereto.
7. PATENT COOPERATION.
If the Company exercises its first right of refusal under
Section 4 hereof as to the relevant Diagnostic Technology, the parties will
consult with and cooperate with each other regarding the filing of all patent
applications with respect to such relevant Diagnostic Technology.
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8. EFFECT OF AGREEMENT BY THE COMPANY WITH CHRONIX BIOMEDICAL.
The Company and Chronix Biomedical, a company of which the
Scientist is a principal ("CHRONIX"), are parties to a Technology Rights
Agreement (the "CHRONIX AGREEMENT") of even date herewith by which the
Company has a right of first refusal to license from Chronix, under terms
identical to those described in Section 5 hereof, certain Diagnostic
Technology that may be developed by Chronix during the term of the Chronix
Agreement. In the event that any Diagnostic Technology is developed by the
Scientist in the course of his employment by or consultancy for Chronix that
becomes, by operation of law, including under any employee or consultancy
invention assignment between the Scientist and Chronix, the property of
Chronix, then such Diagnostic Technology, if licensed by the Company pursuant
to its right of first refusal under the Chronix Agreement, will be licensed
under the Chronix Agreement and not pursuant to this Agreement, and thus the
Company will pay only one license fee and royalty therefor, to Chronix and
not to the Scientist.
9. CONFIDENTIAL INFORMATION.
The parties will maintain as confidential and will not use,
except as permitted hereby, nor disclose to any third party except as may be
required by law (and then with reasonable advance notice to the other party
of such legally-required disclosure), all Confidential Information of the
other party so long as it remains Confidential Information.
10. MISCELLANEOUS.
10.1 NOTICES. All notices required or permitted to be
given under this Agreement will be given in writing and will be effective
when either personally delivered (including delivery by FedEx or other
courier), or when sent by facsimile, or deposited, postage prepaid, in the
United States registered or certified mail, addressed as follows:
To the Scientist: Howard B. Urnovitz, Ph.D.
1440 Fourth Street
Berkeley, California 94710
Facsimile: ___-___-____
To the Company: Calypte Biomedical Corporation
1265 Harbor Bay Parkway
Alameda, California 94502
Attn: Chief Executive Officer
Facsimile: 510-814-8505
or such other address as either party may hereinafter specify by written
notice to the other under this Section 10.1. Such notices and communications
will be deemed effective on the date of delivery by hand or upon confirmed
answerback by facsimile, or fourteen (14) days after having been sent by
registered or certified mail.
10.2 ENTIRE AGREEMENT; AMENDMENT AND WAIVERS. This
Agreement is the entire agreement between the Company and the Scientist with
respect to the specific subject
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matter hereof, superseding in their entirety all other or prior agreements or
understandings between them with respect to the specific subject matter
hereof, including without limitation the Original Agreement. This Agreement
may not be modified, amended, or terminated, nor may any term hereof be
waived, except by an instrument in writing, signed by the Company and the
Scientist. No such waiver will operate as a waiver of, or estoppel with
respect to, any other or subsequent matter. No failure to exercise and no
delay in exercising any right, remedy, or power hereunder will operate as a
waiver thereof, nor will any single or partial exercise of any right, remedy,
or power hereunder preclude any other or further exercise thereof or the
exercise of any other right, remedy, or power provided herein or by law or in
equity.
10.3 SEVERABILITY; ENFORCEMENT. If any provision of
this Agreement, or the application thereof to any person, place, or
circumstance, is held by a court of competent jurisdiction to be invalid,
unenforceable, or void, as written, in whole or in part, such provision will
be deemed to be amended to the extent necessary to be enforceable and applied
by such court in the broadest possible manner consistent with enforceability,
and the remainder of this Agreement and such provisions as applied to other
persons, places, and circumstances will remain in full force and effect.
10.4 ASSIGNMENT; BINDING EFFECT. This Agreement may not
be assigned, nor may any of the Scientist's rights or obligations be
delegated, by the Scientist. This Agreement may be assigned by the Company to
any successor in business to the Company which purchases all or substantially
all of the assets of the Company and which assumes in writing this Agreement
and all obligations of the Company hereunder. This Agreement will be binding
upon and will inure to the benefit of the parties and their respective
successors, permitted assigns, and legal representatives, and upon the
Scientist's heirs, executors and administrators, and will not benefit any
person or entity other than the parties hereto and such specific persons so
described.
10.5. REMEDIES. The parties agree that in the event of
any breach or threatened breach of any of the covenants of the Scientist
herein, the damage or imminent damage to the value and the goodwill of the
Company's business will be irreparable and extremely difficult to estimate,
making any remedy at law or in damages inadequate. Accordingly, the parties
agree that the Company will be entitled to injunctive relief (including,
without limitation, relief in the nature of a temporary restraining order)
against the Scientist in the event of any breach or threatened breach of any
such covenants by the Scientist, in addition to any other relief (including
damages) available to the Company under this Agreement or under law.
10.6. GOVERNING LAW. The validity, interpretation,
enforceability, and performance of this Agreement will be governed by and
construed in accordance with the law of the State of California without
regard to its principles of conflict of laws.
THE SCIENTIST: CALYPTE BIOMEDICAL CORPORATION:
/s/ Howard B. Urnovitz By: /s/ Nancy E. Katz
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HOWARD B. URNOVITZ Name: Nancy E. Katz
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Title: President/COO/CFO
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APPENDIX A
PATENTS OWNED BY, OR ASSIGNED TO, CALYPTE BIOMEDICAL
AS OF MARCH 1, 1997 BY HOWARD B. URNOVITZ, Ph.D.
U.S. Patent No.: 5,516,638
Immunoassays for the Detection of Antibodies to Chlamydia
Trachomatis in the Urine
Issue Date: May 14, 1996