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Exhibit 10.1
EXCLUSIVE PATENT LICENSE AGREEMENT
This
EXCLUSIVE PATENT LICENSE AGREEMENT is entered into as of April
2,
1997, between IriSys Research &
Development, LLC ("LICENSEE") and the Center for
Neurologic Study ("LICENSOR").
NOW,
THEREFORE, the parties hereby agree as follows:
1.
CERTAIN
DEFINITIONS.
1.1 An
"AFFILIATE" of a party means an entity directly or
indirectly controlling, controlled by or
under common control with that party
provided that such entity will be
considered an Affiliate only for the time
during which such control exists.
1.2 "LICENSED
PATENTS" means the patents or patent applications
set forth on Schedule A, including any
continuations, continuations-in-part,
divisions, reissues, reexaminations and
extensions thereof and patents
corresponding thereto.
1.3 "LICENSED
PRODUCTS" means and includes any and all
technologies, products, processes or
biological materials embodied in whole or
in part, in the Licensed Patents.
1.4 "NET
REVENUES" means all sales, fees, royalties, milestone
payments, revenues, receipts, and monies
directly or indirectly collected or
received by Licensee from the sale of
Licensed Products whether in cash or by
way of other benefit, advantage, or
concession (in which case the applicable
revenue will be the monetary equivalent of
the same), whenever and wherever
obtained, which will not in any way be
limited by territorial limitations or by
the source of those revenues, and will
include any revenues which Licensee or
the other party directs to be paid to any
other person or corporation, less (a)
in the event such revenues derive from
Licensee's sublicense to third parties,
any and all of Licensee's reasonable out of
pocket expenses arising therefrom,
including but not limited to, attorney's
fees and expenses and (b) in the event
Licensee sells products or technologies
covered by the Licensed Patents or
derives revenue from performing services
covered by the Licensed Patents the
amount of any trade or cash discounts or
allowances, transportation costs and
costs associated with returns. The
calculations of Net Revenues will be carried
out in accordance with generally accepted
accounting principles applied on a
consistent basis. All aforesaid monies
earned or accrued due to Licensee during
the term of the Licensed Patents, but
collected by Licensee after the term of
the Licensed Patents, will be included
within Net Revenues for the purposes of
this Agreement. Net Revenues does not
include any revenues, receipts or other
monies received in connection with or for
the purpose of research and
development cost funding, including,
without limitation, any governmental or
charitable grants received by Licensee for
such purpose.
2.
LICENSE.
2.1 Grant.
Subject to all terms and limitations of this Agreement,
Licensor hereby grants to Licensee an
exclusive (even as to Licensor) license
(with the right to sublicense to others) to
offer, make, use and sell
technology, products or processes with
respect to, and
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covered by, the Licensed Patents in the
United States. This license will
terminate with respect to any individual
Licensed Patent upon the expiration of
such Licensed Patent, but will remain in
force with respect to any unexpired
Licensed Patents until each such Licensed
Patent expires, and will automatically
expire without the necessity of any action
on the part of Licensor or Licensee,
upon the expiration of the last to expire
of such Licensed Patents. The parties
hereto agree that Licensor shall not sell
the Licensed Products to any other
party during the term of this
Agreement.
2.2 Royalties.
As partial consideration for this Agreement,
Licensee will pay Licensor a royalty of (a)
50% on its Net Revenues received in
connection with the sublicense of the
Licensed Patents or (b) 10% on its Net
Revenues received in connection with the
making, use or sale of products or
technology covered by any of the Licensed
Patents that have not expired at the
time of the receipt of such Net
Revenues.
2.3 Payment.
Royalties will be paid, in US dollars, within thirty
(30) days of the end of each calendar
quarter with respect to Net Revenues
received during that period. For each
applicable period in which Net Revenues
are received by Licensee sales during the
term of this Agreement, Licensee will
provide Licensor a written report within
the same 30 days showing Net Revenues
subject to the royalty obligations of this
Agreement and a calculation of such
royalties then due and payable.
2.3.1 In the event that Licensee becomes obligated at any time
or from time to time during the term of
this Agreement to pay royalties to any
third party to practice the rights granted
hereunder, Licensee's royalty
obligation to Licensor shall be reduced by
an amount equal to its royalty
obligation to such third party.
2.3.2 Licensee's obligation to pay royalties hereunder shall
be suspended during any period of time that
Licensee is enjoined from exercising
any of its rights hereunder with respect to
the Licensed Patents or any Licensed
Products. Upon resolution of any such
matter, Licensee shall promptly pay to
Licensor all amounts previously withheld
with respect to such matter, less (i)
any reduction which may be applicable
pursuant to the paragraph above, and (ii)
expenses incurred in the resolution
thereof.
2.3.3 Any tax paid by Licensee on account of royalties payable
to Licensor under this Agreement shall be
deducted from the amount of royalties
otherwise due.
2
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3.
RECORDS/AUDITS. Licensee shall keep accurate and correct
records
with regard to Net Revenues and royalties
and the calculation thereof under this
Agreement. Such records shall be retained
for at least three (3) years following
a given report period. Licensor is hereby
granted by Licensee the right, upon
reasonable written notice to Licensee, to
retain an independent certified public
accountant reasonably acceptable to
Licensee to audit Licensee's records solely
to verify sales of the Licensed Products
and accuracy of all Net Revenue
reports. Licensor may designate an agent
for purposes of this verification and
this verification shall be upon reasonable
notice to Licensee. Licensor's
independent certified public accountant
shall have the right, at Licensor's
expense, and on a confidential basis, to
copy such records or any portion
thereof.
4.
CONFIDENTIALITY. Each party recognizes the importance to the
other
of the other's proprietary information. In
particular Licensee recognizes that
Licensor's proprietary information (and the
confidential nature thereof) are
critical to the business of Licensor and
that Licensor would not enter into this
Agreement without assurance that such
technology and information and the value
thereof will be protected as provided in
this Section 4 and elsewhere in this
Agreement. Accordingly, the party receiving
the other party's proprietary
information will (i) hold the disclosing
party's proprietary information in
confidence as a fiduciary and take all
reasonable precautions to protect such
proprietary information (including, without
limitation, all precautions the
receiving party employs with respect to its
confidential materials), (ii) not
divulge (except as such disclosure is
required by Licensee's compliance with
legal requirements, and in any such case
Licensee will promptly notify Licensor
of any such legally required disclosure)
any such proprietary information or any
information derived therefrom to any third
person, and (iii) not make any use
whatsoever at any time of such proprietary
information except as expressly
authorized by this Agreement. Without
granting any right or license, the
disclosing party agrees that the foregoing
clauses (i), (ii), and (iii) will not
apply with respect to information the
receiving party can document (a) is in or
(through no improper action or inaction by
the receiving party or any Affiliate,
agent or employee) enters the public domain
(and is readily available without
substantial effort), or (b) was rightfully
in its possession or known by it
prior to receipt from the disclosing party,
or (c) was rightfully disclosed to
it by another person without restriction,
or (d) was independently developed by
it by persons without access to such
information and without use of any
proprietary information of the disclosing
party.
5.
PATENT
MATTERS. Licensor retains the sole right and discretion to
file and prosecute any foreign or US patent
applications and maintain patents
relating to the Licensed Patents or any
improvements made by Licensor. Licensor
will provide any status reports or other
information relating to patents or
patent applications that licensee requests
in writing. Unless agreed otherwise
in writing, in advance, Licensee will not
file, apply for or prosecute any
foreign patents corresponding to the
Licensed Patents. Any improvements to any
technology expressly claimed by the
Licensed Patents (whether or not patentable
or copyrightable) will be owned solely by
Licensor. If either party becomes
aware of any product or activity of any
third party that involves infringement
or violation of any Licensed Patents or
other proprietary right of Licensor,
then such party will promptly notify the
o
