Exhibit 10.1
LICENSE AGREEMENT
This
License Agreement ("Agreement") is made and entered into this 24th
of
November, 2007 (the "Effective Date"), by and between ACCELR8
TECHNOLOGY
CORPORATION, a Colorado corporation, having its principal office at
7000 North
Broadway, Bldg 3-307, Denver, CO 80221 (hereinafter "Accelr8") and
SCHOTT Jenaer
Glas GmbH, having its principal office at Otto-Schott-Strasse 13,
07745 Jena,
Germany (hereinafter "Schott"). Accelr8 and Schott may be referred
to herein
individually as a "Party" and collectively as the "Parties."
WITNESSETH
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WHEREAS, Accelr8 has developed proprietary surface chemistry and
coating
technology; and
WHEREAS, Schott desires to obtain a license to utilize such
technology in a
standard product that it will manufacture, market and distribute to
certain
markets, and Accelr8 so agrees, subject to the terms and conditions
of this
Agreement.
NOW,
THEREFORE, in consideration of the foregoing recitals and the
mutual
covenants and agreements contained herein, the Parties, intending
to be legally
bound, do hereby agree as follows:
ARTICLE 1. DEFINITIONS
As used herein, the following terms shall have the following
meanings:
1.01
"Accelr8 Intellectual Property" means the Accelr8 Know-How and
Accelr8
Patents.
1.02
"Accelr8 Know-How" means all tangible and intangible (a)
techniques,
technology, practices, trade secrets, inventions (whether
patentable or
not), methods, processes (including manufacturing and quality
control
processes), knowledge, know-how, skill, experience, test data
and
results (including pharmacological, toxicological and clinical
test
data and results), analytical and quality control data, results
or
descriptions, software and algorithms, and (b) compounds,
compositions
of matter, complexes and physical, biological or chemical
material,
which exist at Accelr8 and is not publicly known as of the
Effective
Date and are related to Accelr8's proprietary surface chemistry
and
coating
technology.
1.03
"Accelr8 Patents" means (a) those Patents and Patent
Applications
listed in Appendix A, and (b) any Patents owned or licensed (with
a
right of sublicense) by Accelr8 that cover the Process
Improvements.
1.04
"Affiliate" means every corporation, or entity, which, directly
or
indirectly, or through one or more intermediaries, controls, is
controlled by, or is under common control with a Party, as well
as
every officer, director, agent and representative of any such
corporation or entity. For the purposes of the foregoing
definition,
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the word "control" (including, with correlative meaning, the
terms
"controlled by" or "under common control with") means the actual
power,
either directly or indirectly through one or more intermediaries,
to
direct or cause the direction of the management and policies of
such
entity, whether by the ownership of at least fifty percent (50%) of
the
voting stock of such entity, or by contract or otherwise.
1.05
"Calendar Quarter" means any period of three (3) consecutive
months
ending on March 31, June 30, September 30 and December 31.
1.06
"Confidential Information" has the meaning set forth in
ss.7.01.
1.07
"Effective Date" means the date specified in the first paragraph
of
this Agreement.
1.08
"Hydrogel Coatings" means coatings comprising hydrophilic polymers
used
to immobilize molecules and other materials for the purpose of
microarraying.
1.09
"Improvements" means inventions, discoveries, works of
authorship,
trade secrets, know-how or developments, whether or not
patentable,
that are made, conceived, reduced to practice or otherwise
generated by
Accelr8 during the Term, which are improvements, modifications or
other
developments to the Licensed Product (including, without
limitation,
the manufacturing processes for such products and/or the
OptiChem
coating technology), or the OptiChem(R) coating technology.
1.10
"Inventions" means all Improvements, inventions, discoveries,
processes, works of authorship, trade secrets and other
know-how,
developments or the like, whether or not patentable, that are
made,
conceived, reduced to practice or otherwise generated solely by a
Party
or jointly by the Parties as a result of this Agreement
(including,
without limitation, Inventions related to the Licensed Product or
its
manufacture).
1.11
"Licensed Product" means the product described in Appendix B.
1.12
"Net Sales" means the actual gross selling price of Licensed
Products
by Schott or its Affiliates, and their respective agents,
contractors
or distributors, whether invoiced or not, less (a) discounts
allowed in
amounts customary in the trade to the extent actually granted,
(b)
sales/tariff duties and/or taxes directly invoiced and paid,
(c)
outbound transportation prepaid, and (c) amounts credited on
returns.
Net Sales shall also include the fair market value of any
non-cash
consideration received for the sale, lease or transfer of
Licensed
Products.
1.13
"Patents" means:
(a) United States and
foreign patents and/or patent applications
and/or provisional patent applications;
(b) United States and
foreign patents issued from the applications
described in (a) above and from divisionals and continuations
of
these applications;
(c) U.S. and foreign
continuation-in-part applications, and the
resulting patents of any of the U.S. and foreign applications
described in (a) or (b) above or this paragraph (c); and
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(d) any reissues of
United States and foreign patents described in
(a), (b) or (c) above.
1.14
"Process Improvements" means any Improvements by Accelr8 to the
processes for the manufacture of the Licensed Product.
1.15
"Stock Product" means a product that has a single, standard set
of
specifications (including materials and dimensions), publicly
available
at all times to all Schott customers.
1.16
"Term" means the term of this Agreement, as determined in
accordance
with Article 10.
1.17
"Third Party" means any entity or person other than Accelr8 or
Schott.
ARTICLE 2.
GRANT OF RIGHTS
2.01
Accelr8 hereby grants, and Schott accepts, during the Term and
subject
to the terms and conditions of this Agreement, a worldwide,
non-transferable (except as provided in ss.12.01),
non-exclusive,
royalty-bearing license under the Accelr8 Intellectual Property
to
make, use, sell, offer to sell, import and export the Licensed
Product.
The foregoing license also permits Schott to combine the
Licensed
Product with Schott's MPX technology, provided that Schott's
license to
make, use, sell, offer to sell, import and export the combined
product
is in accordance with the license granted in the prior
sentence.
Accelr8 shall provide Schott with all information necessary to
produce
and market Licensed Products, including descriptions or
specifications of
machines, components and materials used for the production.
2.02
The license and rights granted by Accelr8 in ss.2.01 are subject to
the
following:
(a) Schott may not
sublicense the license and rights granted to its
hereunder to any Third Party, including, without limitation,
any
Affiliate;
(b) the Licensed
Product must be a Stock Product;
(c) the Licensed
Product must be appropriately labeled for use and
sale, with restrictions in the instructions for use prohibiting
use for medical purposes.
(d) Schott
acknowledges that the license granted to it hereunder does
not include any Improvements developed during the Term, except
for the Process Improvements.
2.03
Accelr8 hereby reserves all rights in and to the Accelr8
Intellectual
Property not expressly granted to Schott hereunder.
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ARTICLE 3. DILIGENCE AND COMMERCIALIZATION
3.01
As between the Parties, Schott shall control and be responsible
for, at
its sole expense and in its sole discretion, the manufacturing
and
commercialization of the Licensed Products.
3.02
The Parties may provide each other with all freedom to operate
opinions
and other similar information related to the manufacture, use, sale
or
import of the Licensed Product as contemplated hereunder. Said
freedom
to operate opinions and other similar information shall be subject
to
the confidentiality terms described in ss. 7.01.
3.03
Accelr8will provide to Schott, on a time and materials basis as
reasonably requested by Schott, technical support and
consulting
services related to the Licensed Product subject to mutual
agreement on
applicable terms and conditions.
3.04
Schott will provide to Accelr8 within forty (40) days after the end
of
each Calendar Quarter a written report about all sales of the
Licensed
Product during such calendar Quarter. In addition, Schott will
use
reasonable efforts to notify Accelr8 of any misuse of the
Licensed
Product (i.e., any use not in accordance with the applicable
instructions for use for the Licensed Product) by any Third Party,
and
will stop
all sales of Licensed Products as promptly as is practical to
such Third Party.
ARTICLE 4. PAYMENTS AND PAYMENT TERMS
4.01
Initial Fee. On the Effective Date, Schott shall pay to Accelr8
a
non-refundable fee of One Hundred Thousand Dollars ($100,000).
Fifty
Thousand Dollars ($50,000) of such fee shall be credited against
future
royalties payable pursuant to ss.4.02 ("Prepaid Royalties").
4.02
Royalty Payments. Subject to the other terms and conditions of
this
Agreement:
(a) Schott shall pay
Accelr8 a royalty payment equal to six percent
(6%) of Net Sales of Licensed Products; provided, however, that
if the total Net Sales during the Term equal or exceed Two
Million Five Hundred Thousand Dollars ($2,500,000), then the
total royalty payable by Schott under this paragraph (a) for
the
Term shall be a flat fee of One Hundred Fifty Thousand Dollars
($150,000).
(b) No royalties shall
be payable by Schott to Accelr8 under this
ss.4.02 until the Prepaid Royalties are exhausted.
4.03 All royalty amounts payable to Accelr8 under this Agreement
shall be paid
as provided in ss.4.02 above, with all royalties on Net Sales of
Licensed
Products payable (including the balance of any flat fee royalty
payment) within
forty (40) days after the end of the Calendar Quarter in which the
Net Sales
giving rise to the royalty payment obligation were made. Each
payment of royalty
payments shall be accompanied by the report described in
ss.5.01.
4.04 Except as set forth below, all payments hereunder shall be
payable in U.S.
dollars. When conversion of payments from any foreign currency is
required, such
conversion shall be at an exchange rate equal to the rate of
exchange for the
currency of the country from which the royalties are payable as
published by The
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Wall Street Journal, East Coast Edition, on the final day of the
Calendar
Quarter for which a payment is due. In any country where conversion
of the local
currency is blocked and such currency cannot be removed from the
country, at the
election of Accelr8 royalties accrued in that country may be paid
to Accelr8 in
that country in local currency by deposit in a local bank
designated by Accelr8.
All payments other than those specified in the preceding sentence
shall be
payable to Accelr8 by wire transfer, in immediately available
funds, to a bank
account as may be designated by Accelr8 in writing from time to
time.
4.05 If laws or regulations require that taxes be withheld from
royalty payments
due to Accelr8 hereunder, Schott shall have the right to (a) deduct
such taxes
from the royalty payment due to Accelr8 hereunder, (b) timely pay
the taxes to
the proper taxing authority, and (c) send evidence of the
obligation together
with proof of tax payment (including certification of receipt by
the taxing
authority) to Accelr8 within fifty (50) days following such tax
payment.
Notwithstanding the foregoing, Schott shall cooperate with Accelr8
and shall
execute and deliver such documents and take such other actions as
Accelr8 may
reasonably request, for the purpose of (x) obtaining an exemption
from the tax
withholding requirements of any foreign country, (y) obtaining a
refund of any
taxes actually withheld by Schott and paid to a foreign country
pursuant to tax
withholding requirements, and (z) otherwise seeking to lawfully
mitigate the
amount of taxes required to be withheld from any payments due to
Accelr8
hereunder pursuant to applicable foreign tax law.
4.06 Any amounts not paid by Schott when due under this Agreement
shall be
subject to interest from and including the date payment is due
through and
including the date upon which Accelr8 has actually received payment
at a rate
equal to the sum of two percent (2%) plus the prime rate of
interest quoted in
the Money Rates section of The Wall Street Journal, East Coast
Edition,
calculated daily on the basis of a 365-day year, or similar
reputable data
source, or, if lower, the highest rate permitted under applicable
law. The
payment of such interest shall not limit Accelr8 from exercising
any other
rights or remedies it may have as a consequence of the lateness of
any payment.
4.07 On sales of Licensed Products by Schott that are made in other
than
arm's-length transactions, the value of the Net Sales attributed
under this
Article 4 to such a transaction shall be that which would have been
received in
an arm's-length transaction, based on a like transaction at that
time.
ARTICLE 5. REPORTS, RECORDS AND AUDITS
5.01
Schott shall, without request by Accelr8, render to Accelr8
written
accounts for each Calendar Quarter of the Net Sales of Licensed
Products made during such Calendar Quarter and shall pay to Accelr8
the
royalties due on such Net Sales, if any, in accordance with
this
Article 5. The written report shall be in the form mutually agreed
upon
by the Parties, but will include the information required in
ss.3.04.
5.02
Schott shall keep accurate records in sufficient detail to reflect
its
operations under this Agreement and to enable the royalties accrued
and
payable under this Agreement to be determined. Such records shall
be
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retained for at least three (3) years after the close of the period
to
which they pertain, or for such longer time as may be required
to
finally resolve any question or discrepancy raised by Accelr8.
5.03
Upon the request of Accelr8, with reasonable written notice,
Schott
shall permit an independent public accountant selected and paid
by
Accelr8, and bound to confidentiality, to have access during
regular
business hours to such records as may be necessary to verify
the
accuracy of royalty payments made or payable hereunder. Said
accountant
shall disclose any such information acquired by it to Accelr8 only
to
the extent that such information should properly have been
contained in
the royalty reports required under this Agreement. If an
inspection
shows an underreporting or underpayment in excess of five percent
(5%)
for any twelve (12) month period, then Schott shall reimburse
Accelr8
for the cost of the inspection and pay the amount of the
underpayment
including any interest as required by this Agreement.
ARTICLE 6.
INTELLECTUAL PROPERTY; PROSECUTION; COSTS AND ENFORCEMENT
6.01
Ownership of Inventions and Information. Ownership of
Inventions shall
be determined in accordance with the following rules:
(a) Schott shall own
any Inventions (including all intellectual
property rights therein) that it solely makes or conceives
("Schott Inventions").
(b) Accelr8 shall own
any Inventions (including all intellectual
property rights therein) that it solely makes or conceives.
(c) For any Inventions
(including all intellectual property rights
therein) that the Parties jointly make or conceive ("Joint
Inventions"), the Parties shall jointly own any Joint
Inventions,
subject to the restrictions in ss.6.01(e).
(e) For all Joint
Inventions that are jointly owned by the Parties,
each Party is free to utilize such Joint Invention without
accounting or reporting to the other Party, except that neither
Party will assign, license, sublicense, sell, distribute or
otherwise transfer any such Joint Inventions to any competitor
of
the other Party.
6.02
Prosecution and Maintenance of Patents. Each Party shall control
the
preparation, filing, prosecution and maintenance (including
without
limitation conducting or participating in interferences or
oppositions), at its own expense, of any and all Patents that it
owns.
The Parties shall jointly control the preparation, filing,
prosecution
and maintenance (including without limitation conducting or
participating in interferences or oppositions), of any and all
Patents
that are jointly owned by the Parties ("Joint Patents"), and to
equally
share all outside legal fees and expenses associated therewith.
However, if a Party desires not to file, prosecute, issue or
maintain
an application for a Joint Patent in any particular country or
jurisdiction, such Party shall notify the other Party of its
intention
not to do so, and with such notice shall relinquish its interest in
the
same (i.e., shall have no further ownership interest in, license
or
right to use, or any costs associated therewith) in such
particular
country or jurisdiction, and the other Party shall have the right,
but
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not the obligation to file, prosecute, issue or maintain in its
name
such application or patent embodying a Joint Patent in such
particular
country or jurisdiction at its own expense.
6.03
Cooperation of the Parties. At the reasonable request of the
responsible Party, the other Party agrees to reasonable efforts
to
cooperate in the preparation, filing, prosecution, maintenance
and
defense of any Patents under this Agreement and in the obtaining
and
maintenance of any patent extensions, supplementary protection
certificates and the like with respect to any Patent claiming
an
Invention. Such cooperation includes, but is not limited to:
(a) executing all
papers and instruments (including assignment
documents), or requiring its employees or contractors, to
execute
such papers and instruments, so as to effectuate the ownersh
