Exhibit 10.67
TECHNOLOGY RIGHTS AGREEMENT
This Technology Rights Agreement (the "AGREEMENT") is made effective as
of March 1, 2000 (the "EFFECTIVE DATE"), by and between Calypte Biomedical
Corporation ("CALYPTE"), a California corporation, and Chronix Biomedical, a
California corporation ("CHRONIX").
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 Chronix or Calypte 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 (ii) 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 "FIELD" means any urine-based medical diagnostic test.
1.3 "DIAGNOSTIC TECHNOLOGY" means any information, inventions,
and discoveries made, conceived, derived, or otherwise reduced to practice by
Chronix related to the Field.
1.4 "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. RIGHTS OF THE PARTIES TO EXECUTE AND DELIVER THIS AGREEMENT.
The parties hereby represent and warrant to each other that
the representing party (a) has full right and power to execute and deliver this
Agreement, and (b) is not subject to nor a party to any agreement or legal order
or constraint that would be violated by the representing party's execution and
delivery and performance of this Agreement. Chronix represents that it has not
assigned or otherwise transferred to any third party any rights that may be
assigned to Calypte pursuant to this Agreement.
3. TERM.
The term of this Agreement will be from and including March 1,
2000 through and including the earliest of (a) the date agreed in writing by
Calypte and Chronix, or (b) 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 Calypte and Chronix 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.
4. FIRST RIGHT OF REFUSAL.
During the term of this Agreement, Chronix will promptly
disclose in writing to Calypte, in commercially reasonable detail, any
Diagnostic Technology. Such disclosure will be considered to be Confidential
Information of Chronix. Calypte will have sixty (60) days from and including the
date of Calypte's receipt of such disclosure to express in writing to Chronix
Calypte's interest in obtaining from Chronix an exclusive, worldwide license to
practice, make or have made, use, sell, distribute, and license to others, any
invention or discovery made by Chronix within the Field covered by such
disclosure. Any such written expression of interest by Calypte to Chronix will
be considered to be Confidential Information of Calypte. If by the end of such
60-day period Calypte has not delivered to Chronix Calypte's written expression
of such interest, Calypte will have no further rights to the Diagnostic
Technology covered by such particular disclosure, and Chronix 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 Calypte does, within such 60-day period, deliver to Chronix such
written expression of Calypte's interest in the Diagnostic Technology so
disclosed, Chronix and Calypte 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 Calypte to Chronix.
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 Chronix to Calypte thereunder, Calypte
will pay to Chronix, 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 Chronix or on Chronix's 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 Calypte 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 Chronix, will be the property of Chronix subject to the rights of
Calypte under Sections 4 and 5 hereof with respect thereto.
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7. PATENT COOPERATION.
If Calypte 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.
8. EFFECT OF AGREEMENT BY THE COMPANY WITH HOWARD B. URNOVITZ.
Calypte and Howard B. Urnovitz, Ph.D., who is at the date hereof both a
principal of Chronix and Chief Scientific Officer of Calypte, are parties to
a Restated Technology Rights Agreement (the "CALYPTE AGREEMENT") of even date
herewith by which Calypte has a right of first refusal to license from Dr.
Urnovitz, under terms identical to those described in Section 5 hereof,
certain Diagnostic Technology that may be developed by Dr. Urnovitz during
the term of the Calypte Agreement and that does not otherwise belong to
Calypte under any employee invention assignment agreements between Calypte
and Dr. Urnovitz. In the event that any Diagnostic Technology is developed by
Dr. Urnovitz 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 Dr. Urnovitz and Chronix, the
property of Chronix, then such Diagnostic Technology, if licensed by Calypte
pursuant to its right of first refusal under this Agreement, will be licensed
under this Agreement and not pursuant to the Calypte Agreement, and thus
Calypte will pay only one license fee and royalty therefor, to Chronix and
not to Dr. Urnovitz; Chronix is aware that the Calypte Agreement contains
provisions identical in substantive respect to this Section 8.
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 Chronix: Chronix Biomedical
1440 Fourth Street
Berkeley, California 94710
Attn: Chief Executive Officer
Facsimile: ___-___-____
To Calypte: Calypte Biomedical Corporation
1265 Harbor Bay Parkway
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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 Calypte and Chronix with respect to the specific
subject matter hereof, superseding in their entirety all other or prior
agreements or understandings between them with respect to the specific subject
matter hereof. Chronix acknowledges that Calypte and Howard B. Urnovitz, Ph.D.,
a principal of Chronix, are parties to a Restated Technology Rights Agreement
relating to Diagnostic Technology, a copy of which Restated Technology Rights
Agreement has been furnished by Calypte to Chronix; the terms and conditions of
this Agreement will control the relationship of Chronix and Calypte with respect
to the matters described herein. This Agreement may not be modified, amended, or
terminated, nor may any term hereof be waived, except by an instrument in
writing, signed by Calypte and Chronix. 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 be
assigned by Calypte or Chronix to any successor in business to Calypte or
Chronix, as the case may be, which purchases all or substantially all of the
assets of Calypte or Chronix, as the case may be, and which assumes in writing
this Agreement and all obligations of Calypte or Chronix, as the case may be,
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 will not benefit any person or entity other than the
parties hereto and such specific persons so described.
910.5. [SIC] REMEDIES. The parties agree that in the event
of any breach or threatened breach of any of the covenants of Chronix herein,
the damage or imminent damage to the value and the goodwill of Calypte's
business will be irreparable and extremely difficult to estimate, making any
remedy at law or in damages inadequate. Accordingly, the parties agree that
Calypte will be entitled to injunctive relief (including, without limitation,
relief in the nature of a temporary restraining order) against Chronix in the
event of any breach or threatened breach of
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any such covenants by Chronix, in addition to any other relief (including
damages) available to Calypte under this Agreement or under law.
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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.
CHRONIX BIOMEDICAL: CALYPTE BIOMEDICAL CORPORATION:
By: /s/ William A. Boeger By: /s/ Nancy E. Katz
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Name: William A. Boeger Name: Nancy E. Katz
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Title: President Title: President / COO/CFO
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