Exhibit
10.1
License
Agreement
This
License Agreement (" Agreement ") is entered into as of the
11 th day of August, 2008 by and between BioForce
Nanosciences, Inc. (" BIOFORCE "), a Delaware corporation
with its principal place of business located at 1615 Golden Aspen
Dr., Ste 101, Ames, IA 50010-8098 USA, and Aspera Corp. (“
ASPERA ”), a Delaware corporation with its principal
place of business located at 2424 Camden Drive, Ames, IA 50010,
both together “ Parties ” and separately a
“ Party ”.
INTRODUCTION
ASPERA
is a startup developer of ultraminiaturized biomolecular detection
systems, assays, and devices. ASPERA wishes to obtain
the right to utilize certain of BIOFORCE’s intellectual
property (“ BFIP ”), as later defined, for the
purposes of developing products made in accordance with the BFIP,
licensing intellectual property developed based upon the BFIP, and
sublicensing the BFIP. BIOFORCE wishes to license the BFIP to
ASPERA for such use subject to the terms and conditions contained
herein.
1.
DEFINITIONS
The
following terms, when used in this Agreement shall have the
following meanings:
1.1
“Territory” means worldwide.
1.2
“ BFIP ” means the
intellectual property set forth on Exhibit A and licensed
hereunder by BIOFORCE to ASPERA.
1.3
“Technology” means existing
technical data and information provided to ASPERA and pertaining to
the BFIP.
1.4
“Net Sales Price” means The amount
invoiced on sales of Licensed Products, less a) amounts repaid or
credited by reason of rejection or return, and b) to the extent
separately stated on the invoice, taxes levied on the production,
sale, transportation, delivery or use and paid by
ASPERA.
1.5
“Licensed Products” means any product or
part thereof, which is covered in whole or in part by the BFIP, or
products made in accordance with or by means of Licensed
Processes.
1.6
“Licensed Processes” means any process
which is covered in whole or in part by the BFIP.
1.7
"
Combination Products " shall mean any product which contains
essential components containing intellectual property independent
of the BFIP, of which a Licensed Product is a component
2.
Authority.
2.1
Authorizations and
Commitment. Subject to the
terms of this Agreement, ASPERA is hereby granted the right to make
and have made, to use and to have used, to sell and have sold
Licensed Products and to practice Licensed Processes and to use the
Technology, in the Territory, all in accordance with this
Agreement. With these authorizations, ASPERA commits to use
its best commercial efforts to effect introduction of the Licensed
Products into the commercial market as soon as practicable,
consistent with sound and reasonable business practice and
judgment, and to keep Licensed Products reasonably available to the
public.
2.2
Term and Exclusivity. The Term of this Agreement
is set forth in paragraph 9; and the nature of the license rights
granted are as set forth on Exhibit B .
2.3
Sublicense. ASPERA shall have the right to
sublicense for use any or all of the rights and privileges granted
to ASPERA in this Agreement subject to the following:
a) Any
such sublicense will contain provisions which obligate the
Sublicensee to ASPERA to at least the same extent that ASPERA is
obligated to BIOFORCE under this Agreement;
b)
ASPERA agrees that any such sublicense will not be transferable
except to BIOFORCE or ASPERA.
c)
ASPERA agrees to inform BIOFORCE of every fully executed sublicense
involving the BFIP and to provide a copy of each such sublicense to
BIOFORCE upon the latter’s request; and
d)
ASPERA shall not receive from sublicensees anything of value in
lieu of cash payments in consideration for any sublicense under
this Agreement, without the express prior written permission of
BIOFORCE.
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2.4
Ownership . The BFIP and the Technology, and, as
applicable, any inventions and discoveries covered by the BFIP or
the Technology and all divisions, continuations,
continuations-in-part, reissues, reexaminations, or extensions, and
any letters patent that issue thereon, whether developed by a Party
or others, shall be and remain the sole property of BIOFORCE, and
ASPERA shall be obligated and promptly cooperate to transfer such
property to BIOFORCE upon request and without reimbursement.
2.5
First Right of Refusal . To the extent
ASPERA creates any inventions related to the business of BIOFORCE,
as it is defined in Section 6 of this Agreement, BIOFORCE is hereby
given an option to exclusively purchase or license such inventions
for their fair market value and, in the case of a license, on
market terms (each as determined, in the event of a dispute, by an
arbitrator) and a first right of refusal to exclusively purchase or
license such inventions on the same terms as ASPERA proposes to
sell or license such inventions to any third party.
3.
Payments and Reporting to BIOFORCE.
3.1
Royalties
.
ASPERA shall pay BIOFORCE a) a royalty fee of ten
percent (10%) of the Net Sales Price of all Licensed Products; b) a
royalty fee on the Net Sales Price of all Combination Products
determined by multiplying ten percent (10%) by a fraction, the
numerator of which shall be i) ASPERA’s list price of the
Licensed Product in uncombined form; or ii) if ASPERA does not sell
the Licensed Product in uncombined form, the average list price of
all non-combination products of others competitive with the
Licensed Product; and the denominator of which shall be
ASPERA’s list price of the Combination Product, provided that
in any event the royalty rate will not be less than two percent
(2%) of the Net Sales Price of any Combination Product, and c) in
the case of sublicenses, thirty-three percent (33%) of all
sublicense income (e.g., license fees, royalty fees, etc.).
3.2
Reports . ASPERA shall, within thirty (30) days
after the end of each calendar, quarter deliver to BIOFORCE true
and accurate reports of its activities as pertinent to the royalty
calculations in 3.1 hereunder. Among other things, these
reports shall identify which Elements of the BFIP, as defined and
described in Exhibit A to this Agreement, apply to each
Licensed Product, Licensed Process, Combination Product, or
sublicense.
3.3
Payments . ASPERA shall make payment to
BIOFORCE of all royalty amounts due for each calendar quarter,
which shall be based upon ASPERA’s cash receipts for the
quarter, within thirty (30) days of the end of the calendar
quarter.
3.4
Minimum Royalty Payments . ASPERA’s
license rights are subject to the payment to BIOFORCE of certain
minimum royalties as set forth in Exhibit C to this
Agreement. For any year for which the quarterly royalty
payments, as described in Section 3.1, do not in total meet the
minimum figure for any element of the BFIP, a minimum royalty
payment shall be due on January 31 of the following year for that
element of the BFIP. If ASPERA fails to make the minimum
royalty payment for an element of the BFIP by the January 31
deadline, its license rights to that element of the BFIP shall be
terminated.
3.5
Payments to ASPERA for CellWell . In
recognition of ASPERA’s anticipated contribution to the value
of the CellWell element of the BFIP, BIOFORCE agrees to remit to
ASPERA, on a quarterly basis, thirty-three percent (33%) of
licensing or royalty revenue it receives from licensing of that
technology to any party other than ASPERA.
3.6
Late Payments . Late payments shall be subject
to an interest charge of one and one-half percent (1.5%) per
month.
3.7
Maintenance of Records and Review. ASPERA shall
maintain all appropriate books, records, and correspondence with
respect to the performance of its obligations hereunder, and
BIOFORCE shall have the right, upon reasonable notice, to review or
have reviewed, at its own expense, such materials. In the
event that any such inspection shows any under reporting or
underpayment in excess of five percent (5%) for any twelve (12)
month period, then ASPERA shall pay the cost of such examination.
4.
Other
Obligations.
4.1
Patent
Prosecution. Decisions
regarding pursuit of patents, and maintenance or defense of issued
patents, on the BFIP, shall be made solely by BIOFORCE, and the
cost of pursuit, maintenance or defense of said patents shall be
the responsibility of BIOFORCE. It is understood that
BIOFORCE is under no obligation to pursue patent coverage, defend
patents once issued or maintain the patents on the BFIP. If
BIOFORCE chooses not to pursue, maintain or defend a patent on the
BFIP, ASPERA may elect to pay for the cost of having said patent
pursued, maintained or defended in order to protect its rights
under this Agreement. If ASPERA makes such an election, BIOFORCE
shall proceed with said patent action at ASPERA’s
expense.
4.2
Infringement
.
ASPERA shall inform BIOFORCE promptly in writing of any
alleged infringement of the BFIP by a third party and of any
available evidence thereof.
5.
Reciprocal Obligations and Rights.
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5.1
Consulting. Each Party may purchase from
the other services at the rate of $75.00/hour plus expenses as
reasonably required and requested.
5.2
Patterned Surface Ser
