Portions of this exhibit marked [*] are requested to be treated confidentially.
Exhibit 10.83
LICENSE AGREEMENT
-----------------
This Agreement is made by and between Duke University ("LICENSOR"), a
--------
nonprofit educational and research organization organized under the laws of
North Carolina, and having its principal office at Durham, North Carolina, and
AEOLUS PHARMACEUTICALS, INC. ("LICENSEE"), a corporation organized under the
--------
laws of Delaware, and having its principal place of business in Research
Triangle Park, North Carolina, and having its corporate headquarters in Research
Triangle Park, North Carolina.
WHEREAS, LICENSOR and LICENSEE have previously entered that certain License
Agreement, dated July 21, 1995, with respect to certain anti-oxidant compounds
(the "First Agreement") and that certain License Agreement, dated June 25, 1998,
---------------
with respect to certain substituted Porphyrin compounds (the "Second
------
Agreement"); and
- ---------
WHEREAS, in addition to the substituted Porphyrin compounds covered by the
Second Agreement, Irwin Fridovich, James Crapo, and other parties have invented
the Inventions (as hereinafter defined), and LICENSOR, LICENSEE, and National
Jewish Medical and Research Center ("NJC") jointly own all rights, title, and
interest in and to such Invention, including related patents, patent
applications, and unpatented technology; and
WHEREAS, the Inventions, are Future Technology as defined in Section
5.01.04 of the First Agreement and LICENSEE, therefore, has an Option to the
Inventions under certain terms and conditions specified in Article 5 of the
First Agreement; and
WHEREAS, the Inventions were made with U.S. Government support and,
notwithstanding anything to the contrary in this Agreement, the government has
certain rights in the invention under 37 CFR 401; and
WHEREAS, LICENSOR has the right to grant licenses to the foregoing
Inventions, and wishes to have the Inventions utilized in the public interest;
and
WHEREAS, LICENSOR is willing to grant an exclusive license to LICENSEE for
LICENSOR's rights, title, and interest in and to the Invention and related
patent rights and technology subject to the terms and conditions set forth
herein.
NOW, THEREFORE, in consideration of the terms and conditions set forth
herein and other good and valuable consideration, the receipt and sufficiency of
which are hereby acknowledged, the parties hereto agree as follows:
ARTICLE 1 - DEFINITIONS
-----------------------
1.01. "Inventions" shall mean the Substituted Porphyrin Compounds,
----------
described in Duke Invention Disclosure # 2103, invented by Irwin Fridovich,
James Crapo, Michael Trova, Polivini Jolicia Gauuan, Douglas Kitchen and Ines
Batinic-Haberle, and the Cancer Therapy, described in Duke Invention Disclosure
# 2105, invented by James Crapo, Brian Day, Ines Batinic-Haberle, Richard
Gammans, and Zeljko Vujaskovic, as presented in Exhibit A attached hereto and
---------
made a part hereof.
1.02. "Duke Inventors" shall mean Irwin Fridovich, Ines Batinic-Haberle,
and Zeljko Vujaskovic.
1.03. "Patent Rights" shall mean the patents and patent applications listed
-------------
in Exhibit A (collectively, "Patent Applications") and any patent hereafter
issuing on any such Patent Applications, together with all divisions,
continuations, continuations-in-part (but only to the extent that the subject
matter of each such continuation-in-part application is described in and enabled
by the disclosure of said Patent Applications), re-examinations, reissues,
substitutions, or extensions thereof. It is understood and agreed that subject
matter that is patentably distinct from the subject matter described within the
Patent Applications is not within the scope of the Patent Rights even though
that patentably distinct subject matter may fall within the scope of one or more
claims of said Patent Applications. For the avoidance of doubt, patentably
distinct improvements of the Patent Applications shall not be considered Patent
Rights.
1.04. "Subject Technology" shall mean unpatented or unpatentable technology
------------------
with respect to the Inventions, and unpatented or unpatentable technology
necessary to practice the Patent Rights, for use in the Field (as defined in
Section 1.05), which have as of the Effective Date been conceived and reduced to
practice, by one or more of the Duke Inventors, as evidenced by written records.
Subject Technology shall not include the Patent Rights.
1.05. "Field" or "Field of Use" shall mean all applications of the Subject
----- ------------
Technology and the Patent Rights.
1.06. "Licensed Product" shall mean any product which is produced or sold
----------------
by LICENSEE, its Affiliates, and/or its sublicensees that utilizes the Subject
Technology or is covered by one or more valid claims within the Patent Rights,
and which is intended for use in, or is used in, the Field.
1.07. "Net Sales" shall mean the gross sales of Licensed Products sold by
---------
LICENSEE, its Affiliates and/or its sublicensees pursuant to this Agreement,
less allowances to customers for spoiled, damaged, and returned goods, less
quantity, trade, and cash discounts, and less transportation costs, use and
sales taxes, and value added taxes. Net Sales shall include commissions paid to
sales persons or agents and costs of collections. Licensed Products used by
LICENSEE for its own use in the Field shall be considered to be "Net Sales" for
purposes of computing royalty obligations, except such Licensed Products used
for non-revenue producing activity such as promotional items or samples, or
field, pre-clinical or clinical trials. Net Sales
2
shall not include sales between or among LICENSEE, its Affiliates or
sublicensees. Licensed Products shall be considered sold when paid.
1.08. "Affiliate" or "Affiliates" shall mean any company which controls, is
--------- ----------
controlled by or is under common control with LICENSEE. A company shall be
regarded as in control of another if it owns or controls at least fifty-one (51)
percent of the stock entitled to vote in election of members of the Board of
Directors of the other company.
1.09. "Effective Date" shall mean May 7, 2002.
ARTICLE 2 - LICENSE
-------------------
2.01. LICENSOR hereby grants to LICENSEE and LICENSEE hereby accepts from
LICENSOR, upon the terms and conditions herein specified, an exclusive
world-wide license to the Patent Rights and a non-exclusive world-wide license
to the Subject Technology in order to develop, make, have made, use and sell
Licensed Products, with the right to sub-license as provided in Section 2.02
below.
2.02. LICENSEE shall have the right to grant sub-licenses to third parties,
and to extend to its Affiliates any license granted herein to LICENSEE; provided
--------
that any sub-license or extension to an Affiliate of LICENSEE shall require the
prior written consent of LICENSOR, such consent not to be unreasonably withheld.
Any such sub-licenses or extensions shall be subject to the terms of this
Agreement and shall be no less favorable to LICENSOR than is this license.
LICENSEE agrees to be responsible for the performance hereunder by its
Affiliates and sub-licensees, if any. Should LICENSEE cancel the Agreement,
LICENSEE agrees to assign all such sub-licenses directly to LICENSOR.
2.03. Within thirty (30) days following the execution of this Agreement and
thereafter during the period of this Agreement, LICENSOR agrees to provide
LICENSEE with copies of all physical embodiments of information it may have or
later obtain described in the Subject Technology, and copies of any and all
patents or patent applications owned or controlled by the LICENSOR falling
within the scope of the Patent Rights, including all Patent Office (U.S. and
worldwide) actions received and amendments filed, if any, relative thereto.
2.04. LICENSEE shall not disclose any unpublished technology, know-how, and
data included within Subject Technology or Patent Rights and furnished by
LICENSOR pursuant to Section 2.03 above to third parties during the term of this
Agreement or at any time thereafter; provided, however, that such disclosure may
-------- -------
be made at any time: (a) with the prior written consent of LICENSOR, (b) after
the same shall have become public through no fault of LICENSEE, (c) to
Affiliates or sublicensees of LICENSEE or other persons or entities with whom
LICENSEE proposes to enter into a business relationship, provided that such
sublicensee or third party enters into a confidentiality agreement maintaining
the confidentiality of such confidential information, or (d) as required by
applicable law or regulation.
2.05. LICENSEE agrees to use its commercially reasonable efforts to
diligently pursue the development of Licensed Products, and to meet with
representatives of LICENSEE upon reasonable request to discuss such development
efforts. Such development efforts will include
3
LICENSEE's commercially reasonable efforts to manufacture or produce a Licensed
Product utilizing the Subject Technology and/or Patent Rights for testing,
development, and sale, and also to seek required governmental approvals of such
Licensed Product. LICENSEE shall have sole discretion as to the timing of
development and commercialization of any Licensed Product on a country by
country basis, including discretion to delay development or commercialization
after beginning any such efforts. LICENSEE shall report the status of
development of Licensed Products annually to LICENSOR by February 28/th/. Such
report shall provide information at least sufficient to meet LICENSOR's
government reporting requirements and additionally shall include descriptions of
LICENSEE's plans and commercially reasonable estimated timeframes for testing,
development, governmental approvals and marketing/sale of Licensed Products.
ARTICLE 3 - CONSIDERATION;
--------------------------
ROYALTIES; RECORDS; AND REPORTS
-------------------------------
3.01. LICENSOR hereby discloses to LICENSEE and LICENSEE acknowledges that
the research leading to the PATENT RIGHTS was funded in part by the U.S.
Government, and the parties agree that, notwithstanding any use of descriptive
terms such as "exclusive" in Article 2.01 herein and elsewhere in this
Agreement, the U.S. Government has certain rights in the PATENT RIGHTS as set
forth in 37 CFR 401. LICENSOR agrees to comply with all obligations resulting
from such government rights, including, but not limited to, the requirement that
any products sold in the United States based upon such technology be
substantially manufactured in the United States.
3.02. Upon execution of this Agreement by LICENSOR and LICENSEE, LICENSEE
shall cause its parent corporation, Incara Pharmaceuticals Corporation
("Incara") to issue to LICENSOR [*] shares of Incara common Stock (the "Incara
------ ------
Stock"). As a condition to and in connection with the issuance of the Incara
- -----
Stock, LICENSOR agrees to execute and deliver the Investment Representation
Statement that is attached hereto as Exhibit B. Incara has joined this Agreement
---------
as a signatory solely to acknowledge its agreement to issue the Incara Stock to
LICENSOR.
3.03. For the use of valid outstanding patents contained within the Patent
Rights in all countries where such exist and for the use of the Subject
Technology, LICENSEE shall pay a continuing royalty of [*] PERCENT ([*]%) of the
Net Sales of Licensed Products incorporating the Invention, covered by a valid
claim under the Subject Technology or the Patent Rights issued in the country
giving rise to such Net Sales. Prior to the issuance of valid claims under the
Patent Rights, on a country by country basis, LICENSEE shall pay a continuing
royalty of [*] PERCENT ([*]%) of the Net Sales of Licensed Products
incorporating the Patent Rights, Invention and/or Subject Technology.
3.04. After the first commercial sale of a Licensed Product, LICENSEE shall
render to LICENSOR on an annual basis a written account of the Net Sales of
Licensed Products subject to royalties under Section 3.03 in substantially the
same format as Exhibit C. LICENSEE and its Affiliates shall keep full, true, and
accurate books of accounts and other records containing all particulars which
may be necessary to ascertain and verify properly such Net Sales. Upon
LICENSOR's request, LICENSEE and its
[*] Confidential Treatment Requested; Information Omitted and Filed
Separately with the SEC.
4
Affiliates shall permit an independent Certified Public Accountant selected by
LICENSOR (except one to whom LICENSEE has some reasonable objections) at
LICENSOR's expense to have access during ordinary business hours to such of
LICENSEE's or its Affiliates' records as maybe necessary to determine, in
respect of any quarter ending not more than two (2) years prior to the date of
such request, the correctness of any report made under this Agreement. Such
Certified Public Accountant shall be obliged to treat as confidential all
relevant matters.
3.04.01. All royalties shall be ascertained as of January 1 and July 1 of
each calendar year, and shall be due and payable within sixty (60) days
following the end of each such accounting period, shall include the relevant
Duke Invention Disclosure number(s), and shall be made out to Duke University.
Payments should be mailed to Duke University, Attn. Financial Administrator,
Office of Science and Technology, P.O. Box 90083, Suite 10, Grey Building, 2020
W. Main Street, Durham, NC 27708 (or if by courier service, 27705).
3.05. During the term of this Agreement, representatives of LICENSOR will
meet with representatives of LICENSEE at times and places mutually agreed upon
to discuss the progress and results, as well as ongoing plans, with respect to
the evaluation and development of Inventions licensed to LICENSEE; provided,
--------
however, that should LICENSOR's personnel be required by LICENSEE to consult
- -------
with LICENSEE outside of Durham, North Carolina, LICENSEE will reimburse
reasonable travel and living expenses incident thereto.
ARTICLE 4 - PATENTS
-------------------
4.01. LICENSEE shall have sole responsibility for the filing, prosecuting
and maintaining of the appropriate United States patent protection for patents
and patent applications included within the Patent Rights, and all of the
expenses of such protection shall be paid by LICENSEE. Such filings, prosecution
and maintenance shall be made at the discretion of LICENSEE by counsel of
LICENSEE's choosing, and shall be in the name of LICENSOR and such other
inventors as are deemed appropriate. LICENSEE shall make all reasonable efforts
to obtain broad patent coverage as is reasonably and practicably obtainable,
taking into account the need for, likelihood of obtaining and enforceability of
such Patent Rights. LICENSEE shall keep LICENSOR advised as of the prosecution
of such applications by forwarding to LICENSOR copies of all official
correspondence relating thereto and, insofar as is practical, LICENSOR shall
have the opportunity to review and comment on all filings and responses during
the filing and prosecution of such applications. LICENSOR shall have the right
to advise LICENSEE as to such prosecution, and shall have the right to make
reasonable requests as to the conduct of such prosecution and to have official
correspondence reviewed by counsel of LICENSOR's choosing. LICENSOR agrees to
cooperate with LICENSEE in the prosecution of such patent applications to insure
that such applications reflect, to the best of LICENSOR's knowledge, all items
of commercial and technical interest and importance. All final decisions with
respect to the prosecution of such application shall be made with the mutual
agreement of both parties. If LICENSEE or any sublicensee no longer wishes to
continue the prosecution or maintenance of the Patent Rights, LICENSEE shall
notify LICENSOR of this decision in writing as soon as is reasonably practical
and before any deadlines are missed or any rights lost in said Patent Rights.
LICENSOR and/or its other licensees of Patent Rights may then elect to seek
and/or continue
5
pursuing patent protection of the Patent Rights, in which case LICENSOR and/or
such other licensees of Patent Rights shall be responsible for all expenses
attendant thereto; however, in such instances LICENSEE shall forfeit all rights
under this Agreement to such patent applications and resulting patents.
4.02. LICENSEE shall designate the foreign countries, if any, in which
LICENSEE desires patent protection for patents and patent applications included
within the Patent Rights, and, except as provided below, LICENSEE shall have
sole responsibility for fling, prosecuting and maintaining such foreign patents
and patent applications. LICENSEE agrees to meet with representatives of
LICENSOR to discuss a mutually acceptable foreign patent prosecution strategy.
LICENSEE shall pay all expenses with regard to such foreign patent protection,
and such designated foreign patent applications shall be in the name of LICENSOR
and such other inventors as are deemed appropriate. Upon written notice to
LICENSEE, LICENSOR may elect to seek patent protection in countries not so
designated by LICENSEE, in which case LICENSOR shall be responsible for all
expenses attendant thereto; however, in such instances, such patent applications
will not be considered Patent Rights (Appendix A shall be amended accordingly,
if necessary) and LICENSEE shall forfeit all rights under this Agreement to such
patent applications and resulting patents.. In such instances LICENSEE shall
forfeit its rights under this Agreement as to those countries unless LICENSEE
shall agree to pursue such protection (or reimburse LICENSOR's expenses incurred
in the filing for prosecution and maintenance of such patent or patent
application) within thirty (30) days after receiving written notice thereof from
LICENSOR.
4.03. LICENSEE and LICENSOR shall each give the other prompt notice of any
claim or allegation received by it that the manufacture, use, or sale of
Licensed Products constitutes an infringement of a third party patent or
patents. LICENSEE shall have the primary right and responsibility at its own
expense to defend and control the defense of any such claim against LICENSEE, by
counsel of its choosing. The settlement of any such actions must be approved by
LICENSOR, which approval shall not be unreasonably withheld. LICENSOR agrees to
cooperate with LICENSEE in any reasonable manner deemed by LICENSEE to be
necessary in defending or prosecuting such action. LICENSEE shall reimburse
LICENSOR for all expenses reasonably incurred by LICENSOR in providing such
assistance. Notwithstanding the foregoing, LICENSOR shall, in its sole
discretion, be entitled to participate through counsel of its own choosing in
any such action.
4.04. In the event that any Patent Rights licensed to LICENSEE are
infringed by a third party, LICENSEE shall have the primary right, but not the
obligation, to institute, prosecute and control any action or proceeding with
respect to such infringement, by counsel of its choice, including any
declaratory judgment action arising from such infringement. Any amounts
recovered by LICENSEE from third parties in enforcing such Patent Rights shall
be applied first to reimburse LICENSEE's expenses of the action, and any
remaining amount shall be deemed Net Sales for purposes of this Agreement.
Notwithstanding the foregoing, and in LICENSOR's sole discretion, LICENSOR shall
be entitled to participate, through counsel of its own choosing, in any legal
action involving third party infringement of the Subject Technology or Patent
Rights; provided that control of such action shall remain with LICENSEE.
--------
6
ARTICLE 5 - OPTION UNDER FIRST AGREEMENT
----------------------------------------
5.01. LICENSOR and LICENSEE acknowledge that the Inventions are Future
Technology under the First Agreement and that LICENSOR shall continue to have an
option to license technologies developed by Dr. Fridovich under the terms of the
First Agreement, including, but not limited to, the option to license
technologies developed by Dr. Ivan Spasojevic and Dr. Batinic-Haberle in
connection with Dr. Fridovich under the terms of the First Agreement.
ARTICLE 6 - GOVERNMENT CLEARANCE;
---------------------------------
PUBLICATION; OTHER USE; EXPORT
------------------------------
6.01. LICENSEE agrees to use commercially reasonable efforts to have the
Subject Technology cleared for marketing in those countries in which LICENSEE
intends to sell Licensed Products by the responsible government agencies
requiring such clearance. To accomplish such clearances at the earliest possible
date, LICENSEE agrees to file, according to the usual practice of LICENSEE, any
necessary data with such government agencies. Should LICENSEE cancel this
Agreement, LICENSEE agrees to assign its full interest and title in such market
clearance application, including all data relating thereto, to LICENSOR at no
cost to LICENSOR.
6.02. LICENSOR further agrees that the right of publication of the
Inventions and such Subject Technology shall reside in the inventor and other
employees of LICENSOR. LICENSOR shall furnish LICENSEE with copies of any
proposed publication or presentation which describes information not yet in the
public domain at least 45 days in advance of the submission of such proposed
publication or presentation to a journal, editor or other third party in order
to determine whether or not it contains patentable subject matter and for filing
a patent application thereon in the event it does contain such information.
LICENSEE may request, and LICENSOR shall agree to, a delay of such proposed
publication for an additional period, not to exceed thirty days, in order to
protect the potential patentability of any invention described therein: provided
further that LICENSOR shall not unreasonably withhold permission for an
additional delay of thirty (30) more days to allow time for patent filing.
Subject to the foregoing, LICENSEE shall also have the right to publish and/or
co-author any publication regarding the application of Subject Technology in
accordance with the customary academic standards.
6.03. It is agreed that, notwithstanding any provisions herein, LICENSOR is
free to use the Subject Technology and Patent Rights for its own educational,
teaching, research, and clinical purposes without restriction and without
payment of royalties or other fees.
6.04. This Agreement is subject to all of the United States laws and
regulations controlling the export of technical data, computer software,
laboratory prototypes, and other commodities and technology.
7
ARTICLE 7 - DURATION AND TERMINATION
------------------------------------
7.01. This Agreement shall become effective upon the Effective Date, and,
unless sooner terminated as hereinafter provided, shall continue until the
expiration of the last to expire issued patent included in the Patent Rights
(or, if no such patent issues, then upon the abandonment of the last patent
application included within the Patent Rights). Upon the expiration, but not the
earlier termination, of this Agreement, the license granted in Section 2.01
shall continue thereafter on a non-exclusive basis, subject to the continuation
of LICENSEE's obligations under Article 3.
7.02. LICENSEE may terminate this Agreement (with respect to a given
country or countries, or entirely) at any time by giving LICENSOR written notice
at least ninety (90) days prior to such termination, and thereupon terminate its
development efforts or the manufacture, use, or sale of Licensed Products
covered by such patent application or patent, in each case with respect to a
given country or countries or entirely, subject to the provisions of Section
7.04.
7.03. Except as provided above, if either party fails to fulfill any of its
obligations under this Agreement in any material respect, the non-breaching
party may terminate this Agreement, upon written notice to the breaching party,
as provided below. Such notice must contain a full description of the event or
occurrence constituting a breach of the Agreement. The party receiving such
notice will have the opportunity to cure that breach within forty-five (45) days
of receipt of notice. If the breach is not cured within that time, the
termination will be effective as of the sixtieth (60th) day after receipt of
notice. A party's ability to cure a breach will apply only to the first two
breaches properly noticed under the terms of this Agreement, regardless of the
nature of those breaches. Any subsequent breach by that party will entitle the
other party to terminate this Agreement upon proper notice.
7.04. Upon the termination of this Agreement, LICENSEE may notify LICENSOR
of the amount of Licensed Products that LICENSEE (including its Affiliates) has
on hand and LICENSEE and its Affiliates shall then have a license to sell that
amount of Licensed Products, but no more, provided LICENSEE shall pay the
royalty thereon at the rate and at the times required herein. LICENSEE shall
also reimburse LICENSOR for any unreimbursed expenses or fees owed under this
Agreement which are incurred prior to the date of termination.
7.05. If during the term of this Agreement, LICENSEE shall become bankrupt
or insolvent or if the business of LICENSEE shall be placed in the hands of a
receiver or trustee, whether by the voluntary act of LICENSEE or otherwise
(which proceeding, in the case of an involuntary act, is not dismissed within
sixty (60) days), this Agreement shall immediately terminate upon notice to
LICENSEE.
ARTICLE 8 - GOVERNING LAW
-------------------------
8.01. This Agreement shall be construed as having been entered into in the
State of North Carolina and shall be interpreted in accordance with and its
performance governed by the laws of the State of North Carolina, without
reference to its conflicts of laws provisions.
8
ARTICLE 9 - NON-ASSIGNABILITY
-----------------------------
9.01. This Agreement shall be binding upon and inure to the benefit of the
respective successors and assigns of the parties hereto. However, except as
specifically provided herein, LICENSEE may not assign its rights in this
Agreement (except to an Affiliate in which case no consent is required) without
approval of LICENSOR, such approval not to be unreasonably withheld.
ARTICLE 10 - NOTICES
--------------------
10.01. It shall be a sufficient giving on any notice, request, report,
statement, disclosure or other communication hereunder, if the party giving the
same shall deposit a copy thereof in the Post Office in certified mail, postage
prepaid, or shall send such notice via national courier service, addressed to
the other party at its address hereinafter set forth or at such other address as
the other party shall have theretofore in writing designated:
LICENSOR:
Duke University Office of Science and Technology
P. O. Box 90083
Suite 10, Grey Building
2020 W. Main Street
Duke University
Durham, NC 27708 USA (if delivered by courier service,
Zip Code is 27705)
Fax: 919-681-7559
cc: University Counsel
Box 90079
011 Allen Building
Duke University
Durham, NC 27708-0079
LICENSEE:
AEOLUS PHARMACEUTICALS, INC.
79 T.W. Alexander Drive
4401 Research Commons, Suite 200
P.O. Box 14287
Research Triangle Park, NC 27709
Attn: Clayton I. Duncan, President and CEO
cc: Wyrick Robbins Yates & Ponton LLP
4101 Lake Boone Trail, Suite 300
Raleigh, NC 27607
Attn: Larry E. Robbins
9
10.02. The date of giving any such notice, request, report, statement,
disclosure or other communications, and the date of making any payment hereunder
required (provided such payment is received), shall be the earlier of (i) three
(3) days following the date of the U.S. postmark of such envelope if marked, or
(ii) the actual date of receipt.
ARTICLE 11 - INDEMNITY;
-----------------------
INSURANCE; REPRESENTATIONS; STATUS
----------------------------------
11.01. LICENSEE agrees to indemnify, hold harmless, and defend LICENSOR,
its trustees, officers, employees, and agents, against any and all claims,
suits, losses, damages, costs, fees, and expenses, including attorneys fees,
resulting from or arising out of the exercise of this license. LICENSEE shall
not be responsible for the negligence or intentional wrongdoing of LICENSOR, nor
shall LICENSEE be responsible for amounts paid in settlement of any claim
without its approval.
11.02. LICENSEE shall maintain in force at its sole cost and expense with
reputable insurance companies, general liability insurance and products
liability insurance coverage in an amount reasonably sufficient to protect
against liability under Section 11.01 above. LICENSOR shall have the right to
ascertain from time to time that such coverage exists, such right to be
exercised in a reasonable manner.
11.03. Nothing in this Agreement shall be deemed to be a representation or
warranty by LICENSOR of the validity of any of the patents or the accuracy,
safety, efficacy, or usefulness for any purpose of any Subject Technology or
Patent Rights. LICENSOR shall have no obligation, express or implied, to
supervise, monitor, review, or otherwise assume responsibility for the
production, manufacture, testing, marketing, or sale of any Licensed Product,
and LICENSOR shall have no liability whatsoever to LICENSEE or any third parties
for or on account of any injury, loss, or damage, of any kind or nature,
sustained by, or any damage assessed or asserted against, or any other liability
incurred by or imposed upon LICENSEE or any other person or entity, arising out
of or in connection with or resulting from:
11.03.01. the production, use, or sale of any Licensed Product;
11.03.02. the use of any Subject Technology or Patent Rights; or
11.03.03. any advertising or other promotional activities with respect
to any of the foregoing.
11.04. LICENSOR represents to LICENSEE as follows:
11.04.01. LICENSOR has the lawful right to grant the license provided
in this Agreement and that it has not granted rights or licenses in
derogation of this Agreement. LICENSOR agrees that, during the term of this
Agreement, it shall not enter into any other agreements that conflict with
rights or obligations provided hereunder, including any rights and
obligations that survive termination hereof.
10
11.04.02. To the best of LICENSOR's knowledge, except as previously
disclosed in writing to LICENSEE, LICENSOR jointly owns all right, title
and interest in and to the Subject Technology, Inventions, and the Patent
Rights with NJC, free and clear of all liens, claims and encumbrances of
any inventor or agency, or any third party.
11.05. Neither party hereto is an agent of the other party for any purpose
whatsoever.
ARTICLE 12 - USE OF A PARTY'S NAME
----------------------------------
12.01. Neither party will, without the prior written consent of the other
party:
12.01.01. use in advertising or publicity any trade-name, trademark,
trade device, service mark, symbol, or any abbreviation contraction, or
simulation thereof owned by the other party;
12.01.02. use the name or image of any employee or agent of the other
party in any publication, publicity or advertising; or
12.01.03. represent, either directly or indirectly, that any product
or service of the other party is a product or service of the representing
party or that it is made in accordance with or utilizes the information or
documents of the other party.
ARTICLE 13 - SEVERANCE
----------------------
13.01. The invalidity or unenforceability of any provision of this
Agreement or the application thereof to any person or circumstance shall not
affect or impair the validity or enforceability of any other provision or the
application of the first provision to any person or circumstance. Any provision
of this Agreement that might otherwise be invalid or unenforceable because of
contravention of any applicable law, statute or government regulation shall be
deemed to be amended to the extent necessary to remove the cause of such
invalidation or unenforceability and such provision as so amended shall remain
in full force and effect as a part hereof.
ARTICLE 14 - WAIVER
-------------------
14.01. The failure of a party in any instance to insist upon the strict
performance of the terms of this Agreement shall not be construed to be a waiver
or relinquishment of any of the terms of this Agreement, either at the time of
the party's failure to insist upon strict performance or at any time in the
future, and such term or terms shall continue in full force and effect.
11
ARTICLE 15 - ENTIRE AGREEMENT
-----------------------------
15.01. This Agreement, including any schedules or other attachments which
are incorporated herein by reference, contains the entire agreement between the
parties as to its subject matter. This Agreement merges all prior discussions on
the subject matter contained herein between the parties and neither party shall
be bound by conditions, definitions, warranties, understandings, or
representations concerning such subject matter except as provided in this
Agreement or as may be specified later in writing and signed by the properly
authorized representatives of the parties. This Agreement can be modified or
amended only by written agreement duly signed by persons authorized to sign
agreements on behalf of the parties.
ARTICLE 16 - TITLES
-------------------
16.01. All titles and article headings contained in this Agreement are
inserted only as a matter of convenience and reference. They do not define,
limit, extend, or describe the scope of this Agreement or the intent of any of
its provisions.
ARTICLE 17 - DISCLOSURE
-----------------------
17.01. This Agreement and the terms and conditions thereof are confidential
and may not be released or published by either party without the express written
consent of the other party; provided, however, that such disclosure may be made
-------- -------
at any time: (a) to Affiliates or sub-licensees of LICENSEE or potential
investors or other persons or entities with whom LICENSEE proposes to enter into
a business relationship, provided that such sublicensee or third party enters
into a confidentiality agreement maintaining the confidentiality of such
confidential information, or (b) as required by applicable law or regulation.
ARTICLE 18 - CONFIDENTIALITY
----------------------------
18.01. - LICENSOR and LICENSEE each agree to treat any confidential
information disclosed to it by the other party to this AGREEMENT with reasonable
care and to avoid disclosure of such information to any other person, firm or
corporation, and either party shall be liable for unauthorized disclosure or
failure to exercise such reasonable care. Further, the receiving party will not
use the disclosing party's confidential information other than for the benefit
of the parties hereto and relating to this AGREEMENT. These obligations of
non-disclosure and restricted use shall remain effect for each subject
disclosure of confidential information for a period of time of five (5) years
from such disclosure, however, neither party shall have an obligation, with
respect to confidential information disclosed to it, or any part thereof, which:
a. is already known to the party at the time of the disclosure;
b. becomes publicly known without the wrongful act or breach of this
AGREEMENT by the party;
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c. is rightfully received by the party from a third party on a
non-confidential basis;
d. is subsequently and independently developed by employees of the party
who had no knowledge of the information, as verified by written
records;
e. is approved for release by prior written authorization of the party
disclosing the information; or
f. is disclosed pursuant to any judicial or government request,
requirement or order, provided that the party so disclosing takes
reasonable steps to provide the other party sufficient prior notice in
order to contest such request, requirement or order and provided and
provided that such disclosed confidential information otherwise
remains subject to the obligations of confidentiality set forth in
this Article 18.
18.02. Notwithstanding anything to the contrary contained herein, any and
all information pertaining to the maintenance and prosecution of all Patent
Rights shall be considered confidential information of LICENSEE, LICENSOR, and
NJC, and patent applications, issued patents, substitutes, divisions,
continuations, extensions, continuations-in-part or reiusses of any patent
applications filed on the Subject Technology shall be considered the
confidential information of LICENSOR. Nothing contained herein shall be
construed as a restriction on LICENSOR's right to publish under Article 6.02.
ARTICLE 19- SURVIVAL OF TERMS
-----------------------------
19.01. The following Articles shall survive termination of this Agreement:
1, 7, 11, 12, 17, 18, and 19.
- EXECUTION PAGE FOLLOWING -
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IN WITNESS WHEREOF, the parties hereto have executed this License Agreement
on the dates set forth below.
LICENSOR: DUKE UNIVERSITY
- --------
By:
------------------------
Title:
---------------------
[SEAL]
Date:
----------------------
ATTEST:
By:
-----------------------------------
Secretary
LICENSEE: AEOLUS PHARMACEUTICALS, INC.
- --------
By:
------------------------
Title:
---------------------
[SEAL]
Date:
----------------------
ATTEST:
By:
-----------------------------------
Secretary
Incara hereby joins this Agreement as a signatory solely to acknowledge its
agreement to issue the Incara Stock to LICENSOR.
INCARA PHARMACEUTICALS
CORPORATION
By:
------------------------
Title:
---------------------
[SEAL]
Date:
----------------------
ATTEST:
By:
-----------------------------------
Secretary
14