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EXHIBIT
10.39
LICENSE
AGREEMENT
THIS
AGREEMENT is made and entered into the 5 th day
of March, 1998 (hereinafter the “Effective Date”) by
and between GEORGIA TECH RESEARCH CORPORATION , a
non-profit corporation organized and existing under the laws of
the State of Georgia and having its principal offices at the
Georgia Institute of Technology (hereinafter “GIT”),
Centennial Research Building, Atlanta, Georgia 30332-0415
(hereinafter “GTRC”) and RESTORE THERAPEUTICS,
INC. , a corporation incorporated under the laws of the
State of Georgia, and having its registered office in that State
at Suite 2100, The Equitable Building, 100 Peachtree Street,
Atlanta, Georgia 30303-1962 (hereinafter
“RT”).
W I T N E S S E T H
WHEREAS ,
GTRC owns and wants to provide for the commercialization of a
certain invention entitled “Poly (Vinyl Alcohol)
Cryogel” , which is the subject of GTRC Invention
Disclosure number 1837 and U.S. Patent Application Number
08/932,029 (hereinafter the “Invention”).
WHEREAS ,
GTRC has available to it certain know-how, technology, trade
secrets and methods (hereinafter “Know-how”) which
relate to the Invention; and
WHEREAS , RT
wishes to utilize the Invention and Know-how related to the
Invention (hereinafter the “Technology”) to achieve the
development, manufacture, and sale of Products containing the
Technology.
NOW,
THEREFORE , GTRC and RT in consideration of the foregoing and
the mutual promises contained herein and intending to be legally
bound hereby agree as follows:
As used herein:
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1.1 |
“Net
Selling Price” shall mean the gross sales by RT of the
Products, less only usual trade discounts, sales tax which the
seller has to pay or absorb, customs duties and transportation and
insurance charges, if not included in the gross price, and any and
all Federal, foreign, State or local taxes (except income tax)
incurred by the seller on such sales.
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1.2 |
“Patent” shall mean any issued letters patent
disclosing and claiming the Invention, including a reissued patent,
a patent issuing from a continuation application, divisional
application or continuation-in-part application, and means any
foreign patent similar thereto.
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1.3 |
“Products” shall mean any method through which the
Technology is commercialized and utilized by RT.
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1.4 |
“Sales”, “Sell”, or “Sold”
shall mean any sale, transfer, lease, license, permission to use or
other transfer of the right of possession or other conveyance by
RT.
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1.5 |
“Proprietary Information” shall mean information
and trade secrets owned or controlled by GTRC at any time during
the term of this Agreement, which relates to the Inventions covered
by the Licensed Patents, including but not limited to, invention
records, research records and reports, engineering and technical
data, designs, production specifications, processes, methods,
procedures, facilities and know-how.
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1.6 |
“Territory” shall mean the world.
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2.1 |
With
respect to the Technology to which GTRC has exclusive rights, GTRC
hereby grants to RT an exclusive, nontransferable, royalty-bearing
license, with a right of sublicense, to make, sell, and use
Products throughout the Territory. RT shall not export any Product
or enter into any sublicense without fully and completely complying
with any and all United States export or munitions control
regulations and laws.
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2.2 |
RT
acknowledges and agrees that by entering into this agreement, it
may be precluded from receiving sub-contracts from the Georgia
Institute of Technology funded by an agency of the federal
government which it might otherwise be able to receive on a sole
basis.
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2.3 |
Any
provision of this Agreement to the contrary notwithstanding, GTRC
reserves an irrevocable, nonexclusive, royalty-free,
nontransferable license for itself and GIT to use the Technology
for research and educational purposes.
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3.1 |
In
consideration of the granting herein of the License as described in
Article 2, RT shall pay GTRC:
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3.1.1 |
One
Thousand U.S. Dollars ($1,000) within seven (7) days of the
Effective Date of this Agreement; and
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3.1.2 |
the
Royalties as set forth below in Article 5.
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3.2 |
As
additional consideration RT shall issue to GTRC a sufficient number
of shares of the common stock of RT so that GTRC will own Five
percent (5%) of the total number of such shares issued by RT.
Thereafter, should RT sell or otherwise issue additional shares of
stock, a proportionate number of shares shall be issued to GTRC so
that Five percent (5%) ownership interest in RT by GTRC shall
be maintained at all times. Provided, however, that when the book
value of issued shares of common stock exceeds Five Million U.S.
Dollars ($5,000,000), RT shall have no further obligation to issue
shares of common stock to GTRC for and in
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consideration of the license granted herein. Provided further,
that in such event, GTRC shall be deemed to have and is hereby
granted an option to purchase a sufficient number of shares in any
subsequent issue or issues at the book value of such shares to
maintain its Five percent (5%) ownership of RT.
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4.1 |
Subject to
this Paragraph, RT may grant sublicenses to persons or entities
specifically approved in writing by GTRC, which approval shall not
be unreasonably withheld, provided that each sublicense contains a
provision that such sublicense and the rights thereby granted are
personal to the sublicense thereunder and such sublicense cannot be
further assigned or sublicensed.
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4.2 |
Any
sublicense granted pursuant to this Article shall be in accordance
with the terms and conditions of this Agreement and shall at a
minimum contain the same protection for GTRC’s Proprietary
Information as is set forth herein.
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4.3 |
In respect
of any sublicense granted by RT in accordance with this Article, RT
shall promptly pay to GTRC an amount equal to Forty percent
(40%) of any lump sum or other payment howsoever calculated,
made by the sublicense thereunder in consideration for the grant of
such sublicense to it by the RT.
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5.1 |
RT shall
pay GTRC royalties at the rate of Four percent (4%) of the Net
Selling Price of Products sold by RT or any sublicense under this
Agreement.
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5.2 |
All
payments to GTRC under this Agreement shall be made in U.S. dollars
at GTRC’s address for notice. Such payments shall be paid to
GTRC quarterly on a calendar year basis. Payment for sales made
during each quarter of each calendar year shall be made to GTRC
within thirty (30) days after the last day of each
quarter.
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5.3 |
RT shall
pay all royalties due hereunder to GTRC and GTRC shall not be
required to look to any other entity for payment.
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5.4 |
If other
technologies on which royalty is payable need to be licensed to
work the technology, then the royalty payable shall be reduced by
such other necessary royalty, except that at no time shall the
royalty payable to less than Two percent (2%).
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6.1 |
Not later
than March 1 of each calendar year RT shall furnish to GTRC a
statement showing the total net sales of Products by RT during the
immediate preceding calendar year, and the royalties payable
thereon calculated in the manner required in Article 5.
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6.2 |
RT shall
keep at its usual place of business true and particular accounts of
all matters connected with the use of the Technology and the
manufacture and sale of all Products and shall keep books of
account relating to royalties payable hereunder containing true
entries complete in every particular as may be necessary or proper
for enabling the amount of such royalties to be conveniently
ascertained.
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6.3 |
If
requested in writing by GTRC, RT shall at all reasonable times
produce evidence of the matters referred to in Article 6 and shall
permit such evidence to be verified by an independent accountant to
be selected and paid for by GTRC. RT shall give such accountant all
necessary facilities for verifying such evidence and shall give
such information as may be necessary or proper to enable the amount
of the royalties to be verified.
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7.1 |
Should RT
or any consultant or employee of RT during the term of this
Agreement make or discovery any improvement in connection with the
Technology, whether patentable or not, which if practiced would
constitute an infringement of any Patent of the Technology, RT
shall forthwith disclose or cause the same to be disclosed to GTRC,
and such improvement shall be deemed to be a part of the
“Technology” and shall be subject to the terms hereof
for the purpose of calculating royalties hereunder. The foregoing
notwithstanding, RT shall own all right, title and interest in any
such discovery or improvement. However, RT shall make available to
GTRC and GIT any improvements or modifications it makes to the
Technology and grants to GTRC and GIT an irrevocable,
non-exclusive, royalty-free, non-transferable license to use the
improvements throughout the world for educational and research and
development purposes only. If so requested by GTRC, RT shall make
available or supply to GTRC such information or data as is
necessary or convenient for the proper understanding or use of such
discovery or improvement.
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7.2 |
If GTRC
makes or discovers any improvement developed either by David N. Ku,
Linda G. Braddon or David Wootton or under their supervision in
connection with the Technology, whether patentable or not, which if
practiced would constitute an infringement of any Patent on the
Technology, GTRC shall, subject to the pre-existing rights of any
third party, forthwith disclose or cause the same to be disclosed
to RT and such improvement shall be deemed to be included in the
term “Technology” and to be included in this Agreement
and be subject to the terms hereof and any application for letters
patent or other equivalent protection made in respect thereof shall
be treated as if it were included in the term “Patent”.
The costs of prosecuting such applications for letters patent or
equivalent protection and maintaining the letters patent issuing
from such applications shall be borne by RT during the term of this
agreement, subjec
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