EXHIBIT 10.64
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License Agreement
This Agreement is made and entered into between individuals Dr. Waldemar
Gottardi, Dr. Markus Nagl and Dr. Andreas Neher, Institute for Hygiene and
Social Medicine, Leopold-Franzens-Universitat, Fritz-Pregl-Straae 3, A-6010
Innsbruck, Austria ("LICENSORS") and Atlantic Technology Ventures, Inc., a
Delaware Corporation ("LICENSEE"), having offices at 350 Fifth Avenue, Suite
5507, New York, NY 10118.
Whereas, LICENSORS are the owners of the entire right, title and interest
in the Patents and/or Patent Applications described in Exhibit A attached
hereto, and the Technology described and/or claimed therein; and
Whereas, LICENSEE is desirous of obtaining an exclusive worldwide license
in order to practice the above referenced Technology covered by said Patent
Rights and to manufacture, have manufactured, use and sell in the commercial
market the products made in accordance therewith; and
Whereas, LICENSORS are desirous of granting such a license to LICENSEE in
accordance with the terms of this Agreement.
Now, therefore, in consideration of the foregoing and the mutual
agreements contained herein, the parties agree as follows:
ARTICLE 1
DEFINITIONS
1.1 "Patent Rights" shall mean (i) the Patents and Patent Applications
described in Exhibit A attached hereto, the Technology described and/or claimed
therein, and any substitutions, divisions, continuations, continuations-in-part,
patents issuing thereon or reissues or re-examinations thereof and any and all
patents and patent applications corresponding thereto; (ii) all patents and
patent applications to the extent assigned to LICENSORS and to the extent
LICENSORS are able, under their obligations to third parties, to grant rights to
LICENSEE and on which Inventors are a named inventor, the Technology described
and/or claimed therein and any substitutions, divisions, continuations,
continuations-in-part, patents issuing thereon or reissues or re-examinations
thereof, which relate to the design, development and/or manufacture of any
products incorporating the Technology and any and all patents and patent
applications corresponding thereto; (iii) all patents and patent applications to
the extent assigned to LICENSORS and to the extent LICENSORS are able, under
their obligations to third parties, to grant rights to LICENSEE and on which
Inventors are a named inventor, the Technology described and/or claimed therein
and any substitutions divisions, continuations, continuations-in-part, patents
issuing thereon or reissues or re-examinations thereof which relate to any
improvements in the Technology and any and all patents and patent applications
corresponding thereto. The patents and patent applications corresponding thereto
referred to in (i), (ii) and (iii) above, when filed or issued, will be
automatically incorporated in and added to this Agreement and shall periodically
be added to Appendix A attached to this Agreement and made a part hereof;
provided, however, that failure to periodically add such patents and/or patent
applications
thereto shall not be considered to exclude such patents and/or patent
applications from the meaning of "Patent Rights."
1.2 "Licensed Processes" shall mean all technologies, methods, formulas,
plans or processes and any improvements thereof, relating to or which are
covered in whole or in part by any claim contained in the Patent Rights.
1.3 "Licensed Products" shall mean products or components thereof claimed
in Patent Rights or products or components thereof made in accordance with or by
means of any Licensed Process.
1.4 "Net Sales" shall mean the amount billed or invoiced on sales of
Licensed Products or Licensed Processes less:
(a) Customary trade, quantity or cash discounts and non-affiliated
brokers' or agents' commissions actually allowed and taken;
(b) Amounts repaid or credited by reason of rejections or return;
(c) Transportation, insurance, brokerage and handling charges paid or
reimbursed by LICENSEE or its Affiliates;
(d) Amounts withheld by governments;
(e) Tariffs, import/export duties, sales, use, value added and other
excise or turnover taxes and other governmental charges imposed
on the sale of Licensed Products or Licensed Processes, the
provision of services using Licensed Products or Licensed
Processes, or on the production, importation and/or exportation,
use or distribution of Licensed Products or Licensed Processes;
(f) Sales commissions, exportation, use or distribution; and/or
(g) Bad debt deductions actually written off during the period.
Net Sales shall not include amounts paid or sales between or among LICENSEE
and/or its Affiliates. In the event of a use or sale of Licensed Products or
Licensed Processes solely for clinical testing or research and development
purposes for which LICENSEE receives no revenue, the no royalty shall be due or
payable to LICENSORS pursuant to Article 3 hereof or otherwise.
1.5 "Affiliates" shall mean any company, corporation, or business of which
LICENSEE owns or controls at least fifty percent (50%) of the voting stock or
which owns or controls at least fifty percent (50%) of the voting stock of
LICENSEE.
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1.6 "Field" shall mean all potential fields of use of the Patent Right,
the Licensed Products, and the Licensed Processes.
1.7 "Sublicensee" shall mean an entity which LICENSEE has granted (a) the
right to manufacture and market the Licensed Products, (b) the right to practice
the Licensed Processes, or (c) the right to sublicense the Licensed Processes to
others.
1.8 "Technology" shall mean any novel therapeutic use or formulation of
N-Chlorotaruine and any of its derivatives or analogs.
ARTICLE 2
GRANT
2.1 LICENSORS hereby grant to LICENSEE and LICENSEE accepts, subject to
the terms and conditions hereof, a worldwide exclusive (event against LICENSORS)
license in the Field, under the Patent Rights, to make and have made, to use and
have used, to sell and have sold, to distribute and have distributed, and to
market and have marketed the Licensed Products, and to practice the Licensed
Processes, for the life of the Patent Rights. Such license shall include the
right to grant sublicenses. LICENSORS agree they will not assign, encumber,
grant a license to and/or permit a lien to exist upon, the Patent Rights in any
territory for any Field to or by any third party and will not themselves
practice the Patent Rights other than for their own non-commercial research
purposes. Licensors agree, on behalf of themselves, their successors and any
other person or entity who or which may claim a right in or under the Patent
Rights, that any purported transfer or encumbrance of rights shall be null and
void and of no effect.
2.2 LICENSORS hereby grant to LICENSEE the right to extend the licenses
granted in paragraph 2.1 to one or more Affiliates, subject to the terms and
conditions hereof.
2.3 LICENSORS hereby represent and warrant to LICENSEE that LICENSORS are
the sole owners of the Patent Rights as reflected on Exhibit A on the date
hereof, no person or entity has or will have any rights of any kind with respect
to such Patent Rights except for the rights of LICENSEE pursuant to this
Agreement, and accordingly, LICENSORS have full legal right to grant to LICENSEE
the license provided for herein, and such grant does not and will not violate or
conflict with the rights of any person or entity.
ARTICLE 3
ROYALTIES AND FEES
3.1 LICENSEE shall pay to LICENSORS jointly and severally, during the term
of the license of paragraph 2.1, a total royalty of four percent (4%) of the Net
Sales of all Licensed Products sold by LICENSEE and its Affiliates. LICENSEE
shall pay to LICENSORS jointly and severally, during the term of the license of
paragraph 2.1, a total royalty of twenty percent (20%) of the royalties which
LICENSEE and its Affiliates receive from Sublicensees for sublicenses of the
Licensed Products or Licensed Processes. No multiple royalties shall be due
because the sale or sublicense of any Licensed Product or Licensed Process is
described in more than one sentence of this section 3.1. In the event of any
such overlap, the sentence which most accurately describes the relevant
transaction at issue shall prevail. On Net Sales or sublicenses
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between LICENSEE and its Affiliates, royalties shall be payable only on the
resale or resublicense by such Affiliate.
3.2 As further consideration for the license and other rights granted to
LICENSEE hereunder, (a) LICENSEE shall pay to LICENSORS jointly and severally a
one-time patent issue fee of One Hundred Thousand Dollars ($100,000) payable in
cash or registered stock of the Licensee, (b) LICENSEE shall pay to LICENSORS
jointly and severally a one-time milestone payment of Two Hundred and Fifty
Thousand Dollars ($250,000) payable in cash or registered stock of the LICENSEE
upon successful completion of a Phase III clinical trial for a licensed Products
or Licensed Processes, and (c) LICENSEE shall pay to LICENSORS jointly and
severally a one-time milestone payment of One Million Dollars ($1,000,000)
payable in cash or registered stock of the Licensee upon receiving new drug
approval for Licensed Products or Licensed Processes.
ARTICLE 4
REPORTING
4.1 LICENSEE shall report to LICENSORS the date of first sale of Licensed
Products (or results of Licensed Processes) in each country within thirty (30)
day of occurrence.
4.2 LICENSEE shall provide LICENSORS within sixty (60) days after each of
the calendar half-years ending June 30 and December 31, reports setting forth,
for the preceding six (6) -month period, the amount of Licensed Products sold by
LICENSEE and its Affiliates in each country, the Net Sales thereof, the amount
of Sublicensee royalties received by LICENSEE and its Affiliates and the amount
of royalty due to LICENSORS with respect to the foregoing. With each such
royalty report, LICENSEE shall include the payment of the royalty due. Such
report shall include a detailed listing of all deductions from Net Sales,
sublicensee income, or royalties as specified herein. If no royalties are due to
LICNESORS for any reporting period, then no written report shall be required.
All royalties due hereunder shall be payable in United States dollars.
Conversion of foreign currency to U.S. dollars shall be made at the conversion
rate existing in the United States, as quoted in The Wall Street Journal, three
(3) days prior to the date that such royalty payments by LICENSEE was due to
LICENSOR. Payments which are more than thirty (30) days past due and which are
not the subject of a good faith controversy between the parties hereto shall be
subject to an interest charge of one percent (1%) per month.
4.3 LICENSORS agree that at all times, both during the term and after the
termination of this Agreement, they will keep in confidence and trust all
information provided to it hereunder by LICENSEE or provided to them by any
third party pursuant to Section 5.1 hereof (the "Proprietary Information"), and
it will not use or disclose any Proprietary Information or anything directly
relating to such Proprietary Information without the written consent of the
LICENSEE. LICENSORS acknowledge that the Proprietary Information constitutes a
unique and valuable asset of the LICENSEE, which is secret and confidential and
which will be communicated to LICENSORS in confidence and that any disclosure or
other use of the Proprietary Information other than for the sole benefit of the
LICENSEE would be wrongful and would cause irreparable harm to the LICENSEE.
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ARTICLE 5
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ARTICLE 6
PATENT FILING AND MAINTENANCE
6.1 LICENSEE shall take responsibility for the preparation, filing,
prosecution and maintenance of any all patent applications and patents included
in Patent Rights and shall use his best efforts to promptly procure the broadest
possible patents in all countries designated by LICENSEE pursuant to Section
6.2.
6.2 Without limiting the provisions of Section 6.1, LICENSORS and LICENSEE
shall cooperate fully in the preparation, filing, prosecution and maintenance of
the Patent Rights including without limitations, the execution of all papers and
instruments necessary or desirable to enable LICENSEE to apply for, to prosecute
and to maintain patent applications and patents in LICENSORS' name in any
country. Each party shall provide to the other prompt notice as to all matters
which come to its attention and which may affect the preparation, filing,
prosecution or maintenance of any such patent applications or patents. Either
party may give notice to the other of any country in which such party wishes to
seek patent protections for all or any part of the Patent Rights. In the case of
such a designation by LICENSEE (and the provision of reasonable assurance of
payment by it of the expenses to be incurred) LICENSORS may not refuse to seek
such patent protection in the country so designated.
ARTICLE 7
INFRINGEMENT
7.1 With respect to any Patent Rights, LICENSEE and/or its Sublicensees
shall have the right to prosecute in their own names and at their own expense
any infringement thereof. LICENSORS agree to notify LICENSEE promptly of each
infringement of the Patent Rights of which LICENSORS are or become aware.
Failure by either party to commence an action which is contemplated by this
Section 7.1 shall not constitute a breach of this Agreement.
7.2 If LICENSEE or its Sublicensee elects to commence an action as
described above or if an action is third party, LICENSORS shall have the right
either to join the action as a co-plaintiff or co-defendant or to assign to
LICENSEE all of LICENSOR's right, title and interest, expressly including the
right to sue for past infringement thereof, in each patent which is a part of
the Patent Rights and is the subject of such action. In the event LICENSORS join
the action as a co-plaintiff, LICENSEE shall nevertheless control the action
provided that LICENSEE will endeavor to consult with LICENSORS as to the
prosecution of such action. In the event that LICENSORS make an assignment of
such patent, such assignment shall be irrevocable, and such action on that
patent or patents shall thereafter be brought or continued without LICENSOR as a
parties, unless LICENSORS are legally indispensable parties. Notwithstanding any
such assignment to LICENSEE by LICENSORS and regardless of whether LICENSORS are
or are
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not indispensable parties, LICENSORS shall cooperate fully with LICENSEE,
at LICENSEE'S expense, in connection with any action commenced by LICENSEE or
any sublicensee. In the event that any patent is assigned to LICENSEE by
LICENSORS pursuant to this paragraph, LICENSEE shall continue to meet its
obligations under this Agreement, including without limitation its obligation to
pay royalties, as if the assigned patent or patent application were still
licensed to LICENSEE.
7.3 If LICENSEE or its Sublicensee elects to commence an action as
described above, LICENSEE may cover the costs and expensed of such action
(including reasonable attorneys fees and including the coverage of LICENSORS'
costs) by reducing the royalty due to LICENSOR hereunder by up to fifty percent
(50%). In the event that such fifty percent (50%) costs and expenses exceed the
amount of royalties reduced by LICENSEE for any calendar year, LICENSEE may to
that extent reduce the royalties due to LICENSORS from LICENSEE in succeeding
calendar years, but never by more than fifty percent (50%) of the royalty due in
any one calendar year.
7.4 Recoveries or reimbursements from such action (regardless of whether
LICENSEE or LICENSORS receive the award) shall first be applied to reimburse
LICENSEE and LICENSORS for litigation costs not paid from royalties (if any) and
then to reimburse LICENSORS for royalties withheld. Any remaining recoveries or
reimbursements shall be paid to LICENSEE.
7.5 In the event that LICENSEE and its Sublicensee, if any, elect not to
exercise their right to prosecute an infringement of the Patent Rights pursuant
to the above paragraphs, LICENSORS may do so at their own expense, controlling
such action and retaining all recoveries therefrom.
ARTICLE 8
TERMINATION OF AGREEMENT
8.1 This Agreement, unless extended or terminated as provided herein,
shall remain in effect until the last to expire patent in the Patent Rights;
provided, however, that LICENSEE'S obligation to pay royalties pursuant to
Section 3.1 will terminate as to any Licensed Products or Licensed Processes
when the Patent Rights to which they relate expire or are abandoned.
8.2 (a) The following events shall constitute an event of default under
this Agreement (an "Event of Default"):
(i) LICENSEE shall become more than sixty (60) days in arrears in
payment of royalties or expenses due pursuant to this AGREEMENT which
are not the subject of a bona fide dispute between LICENSORS and
LICENSEE and which have not been paid within forty five (45) days
after LICENSEE has received notice of such arrearage from LICENSORS;
or
(ii) LICENSEE breaches this Agreement in any material respect
(other than a breach covered by paragraph 8.2 (a) (i)) and does not
cure such breach within sixty
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(60) days after written notice thereof from LICENSORS or, with respect
to any breach incapable of being fully cured within such sixty (60)
day period, has not made substantial good faith efforts to cure any
such breach within thirty (30) days after written notice thereof from
LICENSORS;
(b) LICENSEE may, at its option, terminate this Agreement at any
time for any reason whatsoever by doing all of the following:
(i) Cease making, having made, using and selling any Licensed
Products or Licensed Processes; and
(ii) Revoke all sublicenses causing all sublicensees to cease
making, having made, using and selling Licensed Products or Licensed
Processes; and
(iii) Give notice to LICENSORS of such cessation and of
LICENSEE'S election to terminate; and
(iv) Tender payment of all accrued royalties.
8.3 On the occurrence of an Event of Default, and if such Event of Default
has not been remedied within sixty (60) days after notice in writing of such
Event of Default has been given to the LICENSEE by LICENSORS, LICENSORS may
terminate this Agreement by written notice.
8.4 Any sublicenses granted by LICENSEE under this Agreement shall provide
for termination or assignment to LICENSORS, at the option of LICENSORS, of
LICENSEE'S interest therein upon termination of this Agreement.
ARTICLE 9
ASSIGNMENT
9.1 This Agreement, the Patent Rights and the other rights and duties
appertaining hereto may not be assigned by either party without first obtaining
the written consent of the other which shall not otherwise be unreasonably
withheld. Any such purported assignment, without the written consent of the
other party, shall be null and void and of no effect. Notwithstanding the
foregoing, LICENSEE may assign this Agreement (i) to a purchaser, merging or
consolidating corporation, or acquirer of substantially all of LICENSEE'S assets
or business and/or pursuant to any reorganization qualifying under section 368
of the Internal Revenue Code of 1986 as amended, as may be in effect at such
time, or (ii) to an Affiliate of LICENSEE.
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ARTICLE 10
GENERAL
10.1 LICENSORS represent and warrant that they own the entire right,
title, and interest in the patent applications or patents comprising the Patent
Rights and that LICNESORS have the authority to issue licenses under said Patent
Rights. LICENSORS do not warrant the validity of the Patent Rights licensed
hereunder and make no representations whatsoever with regard to the scope of the
licensed Patent Rights or that such Patent Rights may be exploited by LICENSEE,
an Affiliate, or Sublicensee without infringing other patents provided, however,
that LICNESORS have no reason to believe that the Patent Rights are invalid or
that exploitation by LICENSEE, an Affiliate or Sublicensee of the Patent Rights
will infringe other patents.
10.2 LICENSORS EXPRESSLY DISCLAIM ANY AND ALL IMPLIED OR EXPRESS
WARRANTIES AND MAKES NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS OF THE TECHNOLOGY, LICENSED PROCESSES OR LICENSED PRODUCTS CONTEMPLATED
BY THIS AGREEMENT FOR ANY PURPOSE.
10.3 (a) LICENSEE shall indemnify, defend and hold harmless LICENSORS and
their heirs and assigns (the "Indemnitees"), against any liability, damage, loss
or expenses (including reasonable attorney's fees and expenses of litigation)
incurred by or imposed upon the Indemnitees or any one of them in connection
with claims, suits, actions, demands or judgments arising out of any theory of
product liability (including, but not limited to, actions in the from of tort,
warranty, or strict liability) concerning any product, process or service made,
used or sold pursuant to any right or license granted under this Agreement. The
above indemnification shall apply whether or not such liability, damage, loss or
expense is attributable to the negligent activities of the Indemnitees but shall
not apply if such liability, damage, loss or expense is attributable to the
willful misconduct of any Indemnitee.
(b) LICENSEE agrees, at its own expense, to provide attorneys reasonably
acceptable to LICENSORS to defend against any actions brought or filed against
any party indemnified hereunder with respect to the subject of indemnity
contained herein, whether or not such actions are rightfully brought.
10.4 The interpretation and application of the provisions of this
Agreement shall be governed by the laws of the State of New York, in the United
States of America without regard to principles of conflicts of law.
10.5 LICENSEE agrees to comply with all applicable laws and regulations.
In particular, it is understood and acknowledged that the transfer of certain
commodities and technical data is subject to United States laws and regulations
controlling the export of such commodities and technical data, including all
Export Administration Regulations of the United States Department of Commerce.
These laws and regulations, among other things, prohibit or require a license
for the export of certain types of technical data to certain specified
countries. LICENSEE hereby agrees and gives written assurance that it will
comply with all United States laws and regulations controlling the export of
commodities and technical data, that it will be solely responsible for any
violation of such by LICENSEE or its Affiliates or Sublicensees, and
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that it will defend and hold LICENSORS harmless in the event of any legal action
of any nature occasioned by such violation.
10.6 Written notices required to be given under this Agreement shall be
addressed as follows:
If to LICENSORS: Dr. Waldemar Gottardi
Dr. Markus Nagl
Institute for Hygiene and Social Medicine,
Leopold-Franzens-Universitat
Fritz-Pregl-Straae 3
A-6010 Innsbruck, Austria
Telephone No.: +43 512 507 3430
FacsimileNo.: +43 512 507 2070
If to LICENSEE: Atlantic Technology Ventures, Inc.
350 Fifth Avenue
Suite 5507
New York, NY 10118
Telephone No.: (212) 267-2503
Facsimile No.:(212) 267-2159
or such other address as either party may request in writing.
10.7 Should a court of competent jurisdiction later consider any provision
of this Agreement to be invalid, illegal, or unenforceable, it shall be
considered severed provision, provided that the remaining provisions of this
Agreement are in accordance with the intention of the parties.
10.8 (a) In the event of any controversy or claim arising out of or
relating to any provision of this Agreement or the breach thereof, the parties
shall try to settle such conflicts amicably between themselves. Subject to the
limitation stated in the final sentence of this section, 10.8, and any such
conflict which the parties are unable to resolve shall be settled through
binding arbitration conducted in accordance with the Rules of the Commercial
Arbitration of the International Chamber of Commerce by one or more arbiter(s)
knowledgeable in commercial law and practices, appointed in accordance with such
rules.
(b) The demand for arbitration shall be filed within a reasonable
time after the controversy or claim has arisen, and in no event after the date
upon which institution of legal proceedings based on such controversy or claim
would be barred by the applicable statue of limitation. The arbitration shall be
in Innsbruck, Austria if initiated by LINCENSORS and New York, U.S.A. if
initiated by LICENSEE.
(c) At the request of either party, arbitration proceedings will be
conducted in the utmost secrecy; in such case, all documents, testimony and
records shall be received, heard and maintained by the arbitrator in the secrecy
under seal, available for the inspection only of the parties and their
respective attorneys and their respective experts who shall agree in advance and
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in writing to receive all such information confidentially and to maintain such
information in secrecy until such information shall become generally known.
(d) The award through arbitration shall be final and binding. Either
party may enter any such award in a court having jurisdiction or may make
application to such court for judicial acceptance of the award and an order of
enforcement, as the case may be. Notwithstanding the foregoing, either party
may, without recourse to arbitration, assert against the other party a
third-party claim or cross-claim in any action brought by a third party, to
which the subject matter of this Agreement may be relevant.
10.9 This Agreement constitutes the entire understanding between the
parties and neither party shall be obligated by any condition or representation
other than those expressly stated herein or therein or as may be subsequently
agreed to by the parties hereto in writing.
10.10 This Agreement may be executed in identical counterparts, each of
which shall be deemed an original but all of which shall constitute one and the
same agreement. This Agreement, once executed by a party, may be delivered to
the other party hereto by facsimile or transmission of a copy of this Agreement
bearing the signature of the party so delivering this Agreement.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed by their duly authorized representatives.
The effective date of this Agreement is October 18, 2001.
Dr. Andreas Neher Dr. Waldemar Gottardi
/s/ Dr. Andreas Neher /s/ Dr. Waldemar Gottardi
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Dr. Markus Nagl
/s/ Dr. Markus Nagl
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Atlantic Technology Ventures, Inc.
/s/ Frederic P. Zotos, Esq.
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By: Frederic P. Zotos, Esq.
Its: CEO and President
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