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Agreement No.
08-0204
EXCLUSIVE LICENSE AGREEMENT
This Agreement is made effective the 21st day of
November, 2007, by and between Wisconsin Alumni Research Foundation
(hereinafter called “WARF”), a nonstock, nonprofit
Wisconsin corporation, and Enable IPC (hereinafter called
“Licensee”), a corporation organized and existing under
the laws of Delaware;
WHEREAS, WARF owns certain intellectual
property rights to the inventions described in the “Licensed
Patents” defined below, and WARF is willing to grant a
license to Licensee under any one or all of the Licensed Patents
and Licensee desires a license under all of them;
NOW, THEREFORE, in consideration of the
mutual covenants and agreements set forth below, the parties
covenant and agree as follows:
Section 1.
Definitions .
For the purpose of this Agreement, the Appendix A
definitions shall apply.
Section 2.
Grant .
A.
License .
WARF
hereby grants to Licensee under the Licensed Patents an exclusive
license to make, use and sell Products in the Licensed Field and
Licensed Territory.
B.
Sublicenses .
(i)
Licensee may grant written, nonexclusive
sublicenses to third parties. Any agreement granting a
sublicense shall state that the sublicense is subject to the
termination of this Agreement. Licensee shall have the same
responsibility for the activities of any sublicensee as if the
activities were directly those of Licensee. Licensee shall
provide WARF with the name, contact information and address of each
sublicensee, as well as information regarding the number of
full-time employees of any such sublicensee to allow WARF to
determine whether it can maintain its small entity filing status
for patent prosecution and maintenance purposes.
(ii)
With respect to sublicenses granted by Licensee
under this Section 2B, Licensee shall pay to WARF an amount equal
to what Licensee would have been required to pay to WARF had
Licensee sold the amount of Products sold by such sublicensee.
In addition, if Licensee receives any fees, minimum
royalties, or other payments in consideration for any rights
granted under a sublicense, and such payments are not based
directly upon the amount or value of Products sold by the
sublicensee, then Licensee shall pay WARF twenty five percent (25%)
of such payments in the manner specified in Section 4E.
Licensee shall not receive from its sublicensees anything of
value in lieu of cash payments in consideration for any sublicense
granted under this Agreement without the express prior written
consent of WARF.
C.
Reservation of Rights .
WARF
hereby reserves the right to grant non-profit research institutions
and governmental agencies non-exclusive licenses to practice and
use the inventions of the Licensed Patents for Non-Commercial
Research Purposes. WARF, the University of Wisconsin and the
inventors of the Licensed Patents shall have the right to publish
any information included in the Licensed Patents.
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D.
License to WARF .
(i)
Licensee hereby grants, and shall require its sublicensee(s) to
grant, to WARF a nonexclusive, royalty-free, irrevocable, paid-up
license, with the right to grant sublicenses to non-profit research
institutions and governmental agencies, to practice and use
“Improvements” for Non-Commercial Research Purposes.
“Improvements” shall mean any patented
modification of an invention described in the Licensed Patents that
(1) would be infringed by the practice of an invention claimed in
the Licensed Patents; or (2) if not for the license granted under
this Agreement, would infringe one or more claims of the Licensed
Patents. Licensee shall provide WARF with a written, enabling
disclosure of each such invention, unambiguously identifying it as
an invention governed by this paragraph, within six (6) months of
the issuance of a patent thereon.
(ii)
In the event that Licensee and its sublicensee(s)
discontinue the use or commercialization of the Licensed Patents or
any Improvements provided for under this Agreement, Licensee shall
grant, and shall require its sublicensee(s) to grant, to WARF an
option to obtain a nonexclusive, royalty-bearing license, with the
right to grant sublicenses, to practice and use said Improvements
for commercial purposes. Licensee shall provide to WARF
written notice that Licensee and its sublicensee(s) intend to
discontinue such use or commercialization immediately upon making
such a decision. WARF’s option with respect to each
Improvement shall expire sixty (60) days after WARF’s receipt
of said written notice from Licensee. The failure of WARF to
timely exercise its option under this paragraph shall be deemed a
waiver of WARF’s option, but only with respect to the
Improvement so disclosed.
Section 3.
Development .
A.
Licensee shall diligently develop, manufacture,
market and sell Products in each Licensed Field and Licensed
Territory throughout the term of this Agreement. Such
activities shall include, without limitation, those activities
listed in the Development Plan attached hereto as Appendix E.
Licensee agrees that said Development Plan is reasonable and
that it shall take all reasonable steps to meet the development
program as set forth therein.
B.
Beginning in calendar year 2008 and until the date
of first commercial sale, Licensee shall provide WARF with a
written Development Report summarizing Licensee’s development
activities since the last Development Report and any necessary
adjustments to the Development Plan. Licensee agrees to
provide each Development Report to WARF on or before thirty (30)
days from the end of each semi-annual period ending June 30 and
December 31 for which a report is due, and shall set forth in each
Development Report sufficient detail to enable WARF to ascertain
Licensee’s progress toward the requirements of the
Development Plan. WARF reserves the right to audit Licensee’s
records relating to the development activities required hereunder.
Such record keeping and audit procedures shall be subject to
the procedures and restrictions set forth in Section 6 for auditing
the financial records of Licensee.
C.
Licensee agrees to and warrants that it has, or
will obtain, the expertise necessary to independently evaluate the
inventions of the Licensed Patents and to develop Products for sale
in the commercial market and that it so intends to develop Products
for the commercial market. Licensee acknowledges that any
failure by Licensee to reasonably implement the Development Plan,
or to make timely submission to WARF of any Development Report, or
the providing of any false information to WARF regarding
Licensee’s development activities hereunder, shall be a
material breach of this Agreement.
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Section 4.
Consideration .
A.
License Fee .
Licensee agrees to pay to WARF a license fee of
fifty thousand dollars ($50,000) in two equal installments of
twenty five thousand dollars ($25,000) with the first installment
due within thirty (30) days of Licensee’s execution of this
Agreement and the second installment due one (1) year from the
effective date of this Agreement.
B.
Royalty .
In addition to the Section 4A license fee, Licensee
agrees to pay to WARF as “earned royalties” a royalty
calculated as a percentage of the Selling Price of Products in
accordance with the terms and conditions of this Agreement.
The royalty is deemed earned as of the earlier of the date
the Product is actually sold, leased or otherwise transferred for
consideration, the date an invoice is sent by Licensee, or the date
a Product is transferred to a third party for any promotional
reasons. The royalty shall remain fixed while this Agreement
is in effect at a rate of five percent (5 %) of the Selling Price
of Products.
C.
Minimum Royalty .
Licensee further agrees to pay to WARF a minimum
royalty of twenty five thousand dollars ($25,000) per calendar year
or part thereof during which this Agreement is in effect starting
in calendar year 2010, against which any earned royalty paid for
the same calendar year will be credited. The minimum royalty
for a given year shall be due at the time payments are due for the
calendar quarter ending on December 31. It is understood that
the minimum royalties will apply on a calendar year basis, and that
sales of Products requiring the payment of earned royalties made
during a prior or subsequent calendar year shall have no effect on
the annual minimum royalty due WARF for any other given calendar
year.
D.
Patent Fees and Costs .
(i)
Licensee also agrees to reimburse WARF for one
hundred percent (100%) of all reasonable costs incurred by WARF in
filing, prosecuting and maintaining the Licensed Patents.
With respect to those costs invoiced to WARF prior to the
Effective Date, Licensee shall pay to WARF $12,197.35 within thirty
(30) days of Licensee’s execution of this Agreement. With
respect to those costs invoiced to WARF after the Effective Date,
Licensee shall pay to WARF such costs within thirty (30) days of
receiving an invoice from WARF.
(ii)
WARF is not obligated to make or maintain any
foreign filing of the Licensed Patents. If Licensee desires
WARF to make or maintain such foreign filings, Licensee must notify
WARF in writing three (3) months prior to the expiration of the
deadline for making such foreign filings, indicating those
countries in which Licensee desires WARF to pursue foreign patent
protection. Any country for which WARF files for such patent
protection at Licensee’s request shall be included in the
Licensed Territory under this Agreement. WARF reserves the
right to file a patent application, at its own expense, in any
countries not requested by Licensee pursuant to this Section 4D.
Licensee acknowledges that if the United States Government
(through any of its agencies or otherwise) has funded research,
during the course of or under which any of the inventions of the
Licensed Patents were conceived or made, the United States
Government is entitled, as a right, under the provisions of 35
U.S.C. § 200-212 and applicable regulations of Chapter 37
of the Code of Federal Regulations, to make and maintain foreign
filings in those countries not selected by Licensee and/or
WARF.
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(iii)
WARF will prosecute all national applications it
files at Licensee’s request pursuant to this Section 4D until
WARF determines that continued prosecution is unlikely to result in
the issuance of a patent in that country. If WARF decides to
abandon prosecution or maintenance of any patent or patent
application under the Licensed Patents in a country in which
Licensee has requested WARF to make and maintain such filing, WARF
shall provide Licensee notice of WARF’s intent to abandon
such application. In such event, Licensee shall have the
right to continue prosecution of said application, at its own
expense, on behalf of WARF and Licensee, to the extent allowed
under applicable law.
E.
Accounting; Payments .
(i)
Amounts owing to WARF under Sections 2B and 4B
shall be paid on a quarterly basis, with such amounts due and
received by WARF on or before the thirtieth (30 th ) day
following the end of the calendar quarter ending on March 31, June
30, September 30 or December 31 in which such amounts were earned.
The balance of any amounts which remain unpaid more than
thirty (30) days after they are due to WARF shall accrue interest
until paid at the rate of the lesser of one percent (1%) per month
or the maximum amount allowed under applicable law. However,
in no event shall this interest provision be construed as a grant
of permission for any payment delays.
(ii)
Except as otherwise directed, all amounts owing to
WARF under this Agreement shall be paid in U.S. dollars to WARF at
the address provided in Section 16(a). All royalties owing
with respect to Selling Prices stated in currencies other than U.S.
dollars shall be converted at the rate shown in the Fede
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