AMENDMENT AND RESTATEMENT OF
THIS AMENDMENT AND RESTATEMENT, hereinafter referred to as “AGREEMENT,” of a certain License Agreement is made and is effective as of January 10, 2002, by and between the University of Utah Research Foundation, having a principal place of business at 615 Arapeen Dr., Suite 110, Salt Lake City, UT 84108, hereinafter referred to as “LICENSOR” and TECHNISCAN, INC., a Utah corporation, as successor in interest to STEVEN A. JOHNSON, having its principal place of business at 350 West 800 North, Suite 100, Salt Lake City, UT 84103, hereinafter referred to as “LICENSEE.”
W I T N E S S E T H:
WHEREAS, LICENSOR and STEVEN A. JOHNSON have entered into a License Agreement dated August 28, 1984, in which TECHNISCAN, INC. is the successor-in-interest to STEVEN A. JOHNSON, and
WHEREAS, LICENSOR AND LICENSEE would both like to amend and restate this License Agreement to better reflect the interests of LICENSOR and LICENSEE;
WHEREAS, LICENSOR desires that the PATENT RIGHTS as defined in the Agreement be developed and utilized to the fullest extent so that its benefits can be enjoyed by the general public;
WHEREAS, the PATENT RIGHTS were developed in the course of research sponsored in part by the U.S. Government, and as a consequence may be subject to overriding obligations of LICENSOR to the U.S. Government;
NOW THEREFORE, for and in consideration of the covenants, conditions and undertakings hereinafter set forth, the parties hereby agree as follows:
1. In consideration for this AGREEMENT and payment in full satisfaction of any and all royalties, fees or other charges due, owing or otherwise payable to LICENSOR by LICENSEE, now or in the future, LICENSEE shall issue to LICENSOR 357,143 shares of its voting common stock. This AGREEMENT shall be in full force and effect from the date of payment of said stock (hereinafter “EFFECTIVE DATE”).
2. In acquiring said shares of stock LICENSOR acknowledges that it is a long standing shareholder of LICENSEE, that it is familiar with the history and business of LICENSEE, that it has had an opportunity to ask questions and receive answers from representatives of LICENSEE regarding the terms and conditions of this investment, including the opportunity to inspect LICENSEE’S organizational documents, books and records, that LICENSOR is experienced and knowledgeable in financial, investment and business matters and can bear the economic risk, including the total loss, of this investment, that it understands that said stock has not been and will not be registered under the Securities Act of 1933 but is being issued in reliance on exemptions for private offerings under said Act and applicable state laws, and that it is acquiring said stock for its own account, for investment purposes only, and not with a view to the resale or distribution of said stock. LICENSOR understands that there is no public market for said shares and that a public market may never develop. LICENSOR further understands that LICENSEE is under no obligation to register said shares on its behalf or to assist LICENSOR in complying with any exemption from registration under Federal or state securities laws.
3. The parties agree that this AGREEMENT amends and restates in its entirety the License Agreement dated August 28, 1984, and that this AGREEMENT shall now govern the relationship between LICENSOR and LICENSEE, as follows:
AMENDED AND RESTATED LICENSE AGREEMENT
THIS AGREEMENT is entered into as of the 10 th day of January 2002 by and between the UNIVERSITY OF UTAH RESEARCH FOUNDATION, a Utah non-profit corporation, having its principal place of business at 615 Arapeen Drive, Suite 110, Salt Lake City, UT 84108, hereinafter referred to as “LICENSOR,” and TECHNISCAN, INC., having its principal place of business at 350 West 800 North, Suite 100, Salt Lake City, UT 84103, hereinafter referred to as “LICENSEE.”
ARTICLE 1. DEFINITIONS
Section 1.1 “PATENT RIGHTS” shall mean all of the intellectual property included in EXHIBIT “A,” together with (a) all pending applications, reissues, renewals, divisions, continuations or extensions thereof, regardless of whether applied for or issued by the United States Patent Office, or any successor thereto, or applied for or issued by any foreign government or any agency or instrumentality thereof having competent jurisdiction and (b) all discoveries, ideas, know-how or substantive improvements of or enhancements to processes, procedures, technology and/or devices used in connection with or related to such intellectual property, developed by LICENSEE, regardless of whether they are patentable or not.
Section 1.2 “LICENSED PRODUCT” means any product, apparatus, kit or component part thereof, or any other subject matter, the manufacture, use or sale of which is covered by any claim or claims included within PATENT RIGHTS.
Section 1.3 “LICENSED METHOD” means any method, procedure, process or other subject matter, the use or practice of which is covered by any claim or claims included within PATENT RIGHTS.
Section 1.4 “AFFILIATE” of LICENSEE means any entity in which LICENSEE has a direct or indirect ownership interest exceeding twenty percent (20%) or any entity which directly or indirectly through one or more intermediaries, controls, is controlled by, or is under common control with LICENSEE. By “control” is meant in excess of fifty percent (50%) voting equity ownership.
ARTICLE 2. LICENSE GRANT
Section 2.1 Subject to the terms and conditions set forth herein, LICENSOR hereby grants to LICENSEE and its AFFILIATES an exclusive, irrevocable, permanent, fully-paid, transferable, unrestricted and unlimited worldwide license under LICENSOR’S PATENT RIGHTS, including the right to sublicense others, to make, have made, use, sell and otherwise dispose of any LICENSED PRODUCT and to use, practice, sell or otherwise dispose of any LICENSED METHOD.
Section 2.2 The license granted in Section 2.1 hereof is expressly made subject to a possible non-exclusive, irrevocable, royalty-free license heretofore granted to the U.S. Government.
Section 2.3 The license granted in Section 2.1 hereof is expressly made subject to LICENSOR’S reservation of the right to practice under LICENSOR’S PATENT RIGHTS for academic purposes.
ARTICLE 3. CONFIDENTIALITY
Section 3.1 LICENSEE and LICENSOR acknowledge that either party may provide certain information to the other about the PATENT RIGHTS that is considered to be confidential. LICENSEE and LICENSOR shall take reasonable precautions to protect such confidential information. Such precautions shall involve at least the same degree of care and precaution that the recipient customarily uses to protect its own confidential information. Nothing contained in this Article 3 shall limit LICENSEE’s rights under the license granted under Section 2.1.
Section 3.2 LICENSEE acknowledges that LICENSOR is subject to the Utah Governmental Records Access and Management Act (“GRAMA”), Section 63-2-101 et. seq., Utah Code Ann. (1953), as
amended. LICENSOR shall keep confidential any information provided to LICENSOR by LICENSEE that LICENSEE considers confidential, to the extent allowable under GRAMA and as provided in Section 53B-16-301 et seq. , Utah Code Ann. In order to be eligible for such protection under GRAMA, confidential information of LICENSEE disclosed to LICENSOR must be in written or other tangible form, marked as proprietary, and accompanied by a written claim by LICENSEE stating the reasons that such information must be kept confidential.
ARTICLE 4. PATENT PROSECUTION AND MAINTENANCE
Section 4.1 LICENSEE, at its sole discretion, may diligently prosecute and maintain PATENT RIGHTS with legal counsel of its choice. LICENSEE shall provide LICENSOR with copies of all relevant documentation and keep LICENSEE informed and apprized of the continuing prosecution. LICENSOR shall keep any such documentation and information confidential.
Section 4.2 LICENSEE shall pay all costs and legal fees incurred by LICENSEE in the preparation, prosecution and maintenance of PATENT RIGHTS. All patent applications and resulting patents from such prosecution and maintenance of LICENSOR’s PATENT RIGHTS shall be applied for and issued in the name of LICENSOR, subject in all instances to the license granted under Section 2.1. Should LICENSEE desire to abandon any specific patent application or patent included among LICENSOR’s PATENT RIGHTS, LICENSEE shall give LICENSOR timely written notice, and LICENSOR may hereafter, at its own expense, assume control of the continued prosecution and/or maintenance of that application or patent.
ARTICLE 5. PATENT MARKING
LICENSEE shall mark all LICENSED PRODUCTS made, used or sold under the terms of this AGREEMENT, or their containers, in accordance with all applicable patent marking laws.
ARTICLE 6. WARRANTY BY LICENSOR
Section 6.1 LICENSOR warrants that it has the lawful right to grant the