Exhibit 10.8
THIS
SUB-LICENSE AGREEMENT (the “Agreement”) is entered into
as of October 25, 2007 (the “Effective Date”) by and
between Material Technologies, Inc., a Delaware corporation
(“Sublicensor”), and Fatigue Solutions Corp., a
California corporation (“Sublicensee”) (individually, a
“Party”; collectively, the “Parties”).
RECITALS
WHEREAS , on August 26, 1993, Sublicensor entered into the
License Agreement with the University of Pennsylvania (the
“Exclusive License Agreement”) to acquire the
exclusive, world-wide right and license, with the right to grant
sublicense, to make, have made, use and sell “Penn Licensed
Product(s)” in the “Field Of Use” (as those terms
are defined in the Exclusive License Agreement); and
WHEREAS , Sublicensor desires to grant to Sublicensee, and
Sublicensee desires to receive from Sublicensor, a sub-license to
make, have made, use and sell use, distribute, and sell Penn
Licensed Product(s) in accordance with the terms and conditions
contained in the Exclusive License Agreement.
NOW
THEREFORE, in consideration of the foregoing recitals and
mutual covenants contained herein, the Parties agree as
follows:
ARTICLE 1
GRANT OF SUB-LICENSE
1.1
Grant of Sub-License . Subject to the terms and
conditions herein and in the Exclusive License Agreement, and on
the basis of the representations, warranties and agreements herein
contained, Sublicensee agrees to receive from Sublicensor, and
Sublicensor agrees to grant to Sublicensee, a non-exclusive
sub-license to make, have made, use and sell use, distribute, and
sell Penn Licensed Product(s).
1.2
Time and Place . The closing of the transactions
contemplated by this Agreement shall take place at the offices of
Sublicensor, located at 11661 San Vicente Boulevard, Suite 707, Los
Angeles, California 90049, immediately upon the full execution of
this Agreement, the satisfaction of all conditions, and the
delivery of all required documents, or at such other time and place
as the Parties mutually agree upon (which time and place are
hereinafter referred to as the “Closing”).
1.3
Royalty . In consideration for the Sub-License,
Sublicensee shall pay to Sublicensor a royalty of 10% of all
“Net Sales” and of all “Net Sales of
Services” (as those terms are defined in the Exclusive
License Agreement). Royalties payable under this Agreement
shall be paid within 90 days following the last calendar quarter in
which the royalties accrue.
ARTICLE 2
SUBLICENSOR’S REPRESENTATIONS AND
WARRANTIES
2.1
Representations and Warranties of the Sublicensor.
The Sublicensor represents and warrant to the Sublicensee, as of
the Closing, that:
2.1.1
Sublicensor has full right, power and authority to enter into this
Agreement and to perform all of its obligations hereunder;
2.1.2
Sublicensor has full power and authority to sub-license all of the
rights, title and interests contained in this Agreement; and
2.1.3
no provision of law and no contract to which Sublicensor is a party
prevents Sublicensor from performing the obligations hereunder.
2.2
Disclosure . No representation or warranty made by the
Sublicensor in this Agreement, nor any document, written
information, statement, financial statement, certificate, or
exhibit prepared and furnished or to be prepared and furnished by
the Sublicensor or its representatives pursuant hereto or in
connection with the transactions contemplated hereby, when taken
together, contains any untrue statement of a material fact, or
omits to state a material fact necessary to make the statements or
facts contained herein or therein not misleading in light of the
circumstances under which they were furnished, to the best of
Sublicensor’s knowledge and belief.
2.3
Reliance . The foregoing representations and
warranties are made by the Sublicensor with the knowledge and
expectation that the Sublicensee is placing reliance thereon.
ARTICLE 3
SUBLICENSEE’S REPRESENTATIONS AND
WARRANTIES
3.1
Representations and Warranties of the Sublicensee.
The Sublicensee represents and warrant to the Sublicensor, as of
the Closing, that:
3.1.1
Sublicensee has full right, power and authority to enter into this
Agreement and to perform all of its obligations hereunder;
3.1.2
no provision of law and no contract to which Sublicensee is a party
prevents Sublicensee from performing the obligations hereunder;
and
3.1.3
Sublicensee acknowledges that it is, and agrees to be bound by all
of the terms set forth in the Exclusive License Agreement.
3.2
Disclosure . No representation or warranty made by the
Sublicensee in this Agreement, nor any document, written
information, statement, financial statement, certificate, or
exhibit prepared and furnished or to be prepared and furnished by
the Sublicensee or its representatives pursuant hereto or in
connection with the transactions contemplated hereby, when taken
together,
contains any untrue statement of a material fact, or omits to state
a material fact necessary to make the statements or facts contained
herein or therein not misleading in light of the circumstances
under which they were furnished, to the best of Sublicensee’s
knowledge and belief.
3.3
Reliance . The foregoing representations and
warranties are made by the Sublicensee with the knowledge and
expectation that the Sublicensor is placing reliance thereon.
ARTICLE 4
CONFIDENTIALITY & NONDISCLOSURE
4.1
Obligations . Each Party (the “Receiving
Party”) acknowledges and agrees that any business and
technical information provided to the Receiving Party by the other
Party (the “Disclosing Party”) hereunder constitutes
the confidential and proprietary information of the Disclosing
Party, and that the Receiving Party's protection thereof is
essential to this Agreement and a condition to the Receiving
Party's use and possession thereof. The Receiving Party shall
retain in strict confidence and not disclose to any third party
(except as authorized by this Agreement) without the Disclosing
Party's express written consent, any and all such
information. Licensee acknowledges and agrees that the
Intellectual Property is confidential and proprietary information
of Licensor.
4.2
Exceptions . The receiving Party shall be relieved of
this obligation of confidentiality to the extent any such
information:
(i)
was in the public domain at the time it was disclosed or has become
in the public domain through no fault of the Receiving Party;
(ii)
the Receiving Party can prove was known to the Receiving Party,
without restriction, at the time of disclosure as shown by the
files of the Receiving Party in existence at the time of
disclosure;
(iii)
is disclosed by the Receiving Party with the prior written approval
of the Disclosing Party;
(iv)
the Receiving Party can prove was independently developed by the
Receiving Party without any use of the Disclosing Party's
confidential information and by employees or other agents of the
Receiving Party who have not had access to any of the Disclosing
Party's confidential information; or
(v)
becomes known to the Receiving Party, without restriction, from a
source other than the Disclosing Party without breach of this
Agreement by the Receiving Party and otherwise not in violation of
the Disclosing Party's rights.
4.3
Notification of Security Breach . The Receiving Party
agrees to notify the Disclosing Party promptly in the event of any
breach of its security under conditions in which it would appear
that the trade secrets contained in the Intellectual Property
were
prejudiced or exposed to loss. The Receiving Party shall,
upon request of the Disclosing Party, take all other reasonable
steps necessary to recover any compromised trade secrets disclosed
to or placed in the possession of the Receiving Party by virtue of
this Agreement. The cost of taking such steps shall be borne
solely by the Receiving Party.
4.4
Injunctive Relief . Each Receiving Party acknowledges
that any breach of any of its obligations with respect to
confidentiality or use of the Disclosing Party's confidential
information hereunder is likely to cause or threaten irreparable
harm to the Disclosing Party, and, accordingly, the Receiving Party
agrees that in the event of such breach the Disclosing Party shall
be entitled to seek equitable relief to protect its interest
therein, including but not limited to preliminary and permanent
injunctive relief, as well as money damages.
ARTICLE 5
INDEMNIFICATION
Each
Party (the “Indemnifying Party”) agrees to indemnify,
defend, and hold harmless the other Party (the “Indemnified
Party”) from and against any and all claims, damages, and
liabilities, including any and all expense and costs, legal or
otherwise, cause
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