TECHNOLOGY LICENSE AGREEMENT
This Agreement, effective October 16, 2001, ("EFFECTIVE DATE"),
is
entered into by Bechtel B WXT Idaho, LLC, having its principal
place of business
at 2525 N. Fremont Avenue, Idaho Falls, Idaho, 83415 ("BBWI"), and
TETRIDYN
Solutions, Inc. having its principal place of business at 1139
Lowell, Idaho
Falls, Idaho ("TETRIDYN"). The parties hereto also referred to
singularly or
collectively as "Party" or "Parties".
BACKGROUND
Under research programs funded by BBWI and the United States
(U.S.)
Government, BBWI has developed certain technology and intellectual
property
pertaining to data integration, management and presentation.
BBWI is a management and operating contractor of the Idaho
National
Engineering and Environmental Laboratory ("INEEL") under its
Contract No.
DE-AC07-99ID13727.
BBWI desires to license the technology to TETRIDYN thereby
benefiting
U.S. competitiveness by TETRIDYN commercially developing,
manufacturing, using,
and distributing processes and products embodying the
technology.
TETRIDYN is engaged in the business of providing software and
related
consulting services and desires to receive a license from BBWI in
order to
commercially develop, manufacture, use, and distribute processes
and products
embodying the technology.
The Parties agree as follows:
Article 1
Definitions
1.1 ACCOUNTING PERIOD means each six (6) month period ending June
30 and
December 31.
1.2 CLAIM means any patent claim that has not: (a) expired; (b)
become
abandoned; or (c) been declared unpatentable, unenforceable, or
invalid by a
patent office or a court of competent jurisdiction in any
unappealed and
unappealable decision.
1.3 DERIVATIVE WORKS are any works that are based on the LICENSED
MATERIALS or
any portion thereof and that, if prepared without BBWI's
permission, would
constitute an infringement of the LICENSED MATERIALS.
1.4 LICENSED INTELLECTUAL PROPERTY means patents, patent
applications, and
invention disclosure records, licensable by BBWI which pertain to
the Licensed
Technology identified in attached Appendix A.
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1.5 LICENSED MATERIALS shall mean computer software [in source and
object code]
and related documentation therefor provided to TETRIDYN by BBWI and
identified
in attached Appendix A.
1.6 LICENSED PRODUCTS means any apparatus, product, process,
product-by-process,
or the manufacture, use, importation, offering for sale, or sale of
which
embodies in whole or in part at least one CLAIM of any of the
LICENSED
INTELLECTUAL PROPERTY.
1.7 LICENSED TERRITORY means worldwide.
1.8 NET SALES PRICE means the total amounts invoiced to purchasers
for LICENSED
PRODUCTS or LICENSED MATERIALS sold, leased, or otherwise made
available by
TETRIDYN or a SUBLICENSEE less deduction of regular trade and
quantity discounts
and any allowances and credits because of returns and price
adjustments for
LICENSED PRODUCTS or LICENSED MATERIALS previously transferred.
When LICENSED
PRODUCTS are not sold separately, but are sold in combination with
or as parts
of other products, the NET SALES PRICE of LICENSED PRODUCTS or
LICENSED
MATERIALS so sold, leased, or otherwise made available by TETRIDYN
or a
SUBLICENSEE shall be the published list price (or, if there is no
published list
price, then the price at which LICENSED PRODUCTS or LICENSED
MATERIALS are
typically sold) for the LICENSED PRODUCTS or LICENSED MATERIALS
when sold alone,
or the actual price paid or attributed to the LICENSED PRODUCTS or
LICENSED
MATERIALS for the sale in question, whichever is higher.
1.9 SUBLICENSEE means a licensee of TETRIDYN having a properly
executed license
agreement with TETRIDYN to practice, and if applicable, make
available to
others, the LICENSED INTELLECTUAL PROPERTY or LICENSED MATERIALS in
accordance
with the terms and conditions of this Agreement.
Article 2
License
Grant
2.1 Subject to the pre-existing rights set forth in this Article,
BBWI grants to
TETRIDYN an exclusive, royalty bearing license under LICENSED
INTELLECTUAL
PROPERTY, including the right for TETRIDYN to grant sublicenses, to
make, have
made, use, sell, offer to sell, and import LICENSED PRODUCTS in the
LICENSED
TERRITORY. Affiliates and subsidiaries shall be considered separate
entities and
must have a sublicense to practice these rights.
2.2 Excepting issued License Agreements (99-LA-O14 issued to LSC
Group and
99-LA-019 issued to SmithKline Beecham Pharmaceuticals) and subject
to the grant
by DOE to BBWI of authorization to assert copyright in the LICENSED
MATERIALS,
the BBWI grants to TETRIDYN an exclusive right to use, copy,
modify, distribute,
prepare DERIVATIVE WORKS and compilations, perform and display
publicly the
LICENSED MATERIALS within the LICENSED TERRITORY where BBWI may
lawfully grant
such a license. BBWI further grants to TETRIDYN the right to grant
sublicenses
to others only for the right to use, copy and grant to others the
right to only
use the executable object code and documentation of said LICENSED
MATERIALS. Any
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sublicense granted by the Licensee shall include all of the rights
and
obligations due the BBWI and the U.S. Government that are contained
in this
License Agreement.
2.3 Notwithstanding provisions 2.1 and 2.2, BBWI retains a right to
issue not
more than two (2) use-only license agreements each calendar year to
support
INEEL Work For Others programs.
2.4 Notwithstanding provisions 2.1 and 2.2, the U.S. Government
retains a
worldwide, nonexclusive, nontransferable, irrevocable, paid-up
license to
practice or have practiced the LICENSED INTELLECTUAL PROPERTY for
or on behalf
of the U.S. Government.
2.5 The U.S. Department of Energy (DOE) has certain march-in rights
to the
LICENSED INTELLECTUAL PROPERTY and LICENSED MATERIALS in accordance
with 48 CFR
27.304-1(g).
2.6 The Government and others acting on its behalf retain a
paid-up,
non-exclusive, irrevocable world-wide license in LICENSED MATERIALS
to
reproduce, prepare DERIVATIVE WORKS, perform publicly and display
publicly.
Unless the above limited Government retained license is extended by
the DOE, 4
years after the EFFECTIVE DATE, the Government may also permit
others to
reproduce, distribute copies to the public, prepare DERIVATIVE
WORKS, perform
publicly and display publicly LICENSED MATERIALS.
Article 3
License Fees and Royalties
3.1 TETRIDYN shall pay to BBWI the license fees, royalties, and
royalty based
payments as specified and in accordance with attached Appendix B,
which is
hereby incorporated within this Agreement.
Article 4
Sublicensing
4.1 TETRIDYN shall provide BBWI with a list of all sublicenses
entered into
during the preceding calendar year and the revenues received from
each
sublicense by the end each February. Prior to entering into an
exclusive
sublicense, approval shall be obtained from BBWI. Such approval
will be deemed
effective upon BBWI granting TETRIDYN written approva1 of such
exclusive
sublicense.
4.2 It is anticipated that in general, sublicenses will be granted
to allow
normal use of the software specified in the LICENSED MATERIALS. Any
sublicense
that grants all, or substantially all, of the rights granted
TETRIDYN under this
Agreement will be considered an assignment and is subject to
Article 11.
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4.3 All sublicense agreements will set forth at a minimum the U.S.
Government's
retention of a worldwide, nonexclusive, nontransferable
irrevocable, paid-up
license to LICENSED INTELLECTUAL PROPERTY and LICENSED MATERIALS
for or on
behalf of the U.S. Government throughout the world; the DOE's
march-in rights of
Article 2; the export control requirements of Article 13; the
marking
requirement of Article 16; and the U.S. manufacturing preference
set forth in
Article 15.
4.4 If this Agreement is terminated for any reason, TETRIDYN shall,
upon written
request of BBWI, immediately assign all of its rights to all
sublicenses to
BBWI, including the right to receive all income from SUBLICENSEES.
TETRIDYN
shall prior to execution of each sublicense make the SUBLICENSEE
aware this
contingency.
4.5 Division of sublicensing royalty income is specified in
Appendix B.
Article 5
Obtaining and Maintaining Intellectual Property
5.1 BBWI shall be responsible for the preparation, filing,
prosecution and
maintenance of U.S. patent applications and U.S. patents included
in the
LICENSED INTELLECTUAL PROPERTY, that are incurred prior to the
execution of the
Agreement. BBWI will continue to prepare, file, prosecute and
maintain these
patents after execution of this Agreement, but TETRIDYN will
reimburse BBWI for
all reasonable out of pocket costs associated with these actions,
except for the
cost of BBWI's internal Patent Counsel.
5.2 If TETRIDYN desires non-U.S. patent protection for LICENSED
INTELLECTUAL
PROPERTY, TETRIDYN shall be responsible for the preparation,
filing, prosecution
and other related expenses of such non-U.S. patent applications and
non-U.S.
patents included in the LICENSED INTELLECTUAL PROPERTY, such
applications to be
filed solely in the name of BBWI or its designee.
5.3 With respect to the LICENSED INTELLECTUAL PROPERTY, each
document pertaining
to the filing, prosecution, or maintenance of a foreign patent
application or
foreign patent, including but not limited to each patent
application, office
action, response to office action, request for terminal disclaimer,
and request
for reissue or reexamination of any patent issuing from such
application will be
provided to BBWI. Documents received from any patent office or
counsel's
analysis thereof shall be provided to BBWI promptly after receipt.
If TETRIDYN
elects not to pay or continue to pay the out of pocket costs
associated for such
LICENSED INTELLECTUAL PROPERTY, TETRIDYN shall notify BBWI within
thirty (30)
days of TETRIDYN's decision and TETRIDYN shall thereafter be
relieved of the
obligation to pay any additional costs regarding such LICENSED
INTELLECTUAL
PROPERTY incurred after the receipt of such notice by BBWI. Such
foreign patent
application or patent will thereupon cease to be LICENSED
INTELLECTUAL PROPERTY
and BBWI will be free to license its rights to that particular
foreign patent
application or patent to any other party on any terms.
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<PAGE>
Article 6
Payments and Reports
6.1 TETRIDYN shall keep, and will cause each of its SUBLICENSEES,
if any, to
keep detailed and accurate accounting records containing all
information and
data necessary for determining performance and calculating all
fees, royalties,
and royalty based payments payable to BBWI. Such accounting
records, with all
necessary supporting information and data will, during all
reasonable times for
the three (3) years following the end of the calendar year to which
each
accounting record pertains, will be available and open for
inspection at
reasonable times by BWWI or its designee, and at BBWl's expense,
for verifying
royalty reports or verifying TETRIDYN's compliance with this
Agreement.
6.2 The amount of royalty due will be calculated semi-annually as
of the end of
each ACCOUNTING PERIOD and will be paid in U.S. currency within
sixty (60) days
from these dates. Conversion from any foreign currency will be at
the rate of
exchange published in the Wall Street Journal for the business day
closest to
the end of the applicable ACCOUNTING PERIOD. If no amount is
accrued during any
ACCOUNTING PERIOD, TETRIDYN shall provide a written statement
indicating such to
BBWI.
6.3 With each royalty payment, TETRIDYN shall deliver to BBWI a
full and
accurate report to include the following information:
(a) Quantity
(by country) of the LICENSED PRODUCTS sold, leased,
or otherwise disposed of by TETRIDYN and each SUBLICENSEE;
(b) The total
NET SALES PRICE of the LICENSED PRODUCTS (by
country) sold, leased or otherwise disposed of by TETRIDYN and
each SUBLICENSEE;
(c) Quantities
of the LICENSED PRODUCTS used internally by
TETRIDYN and each SUBLICENSEE;
(d) Names and
addresses of each SUBLICENSEE of TETRIDYN; and
(e) Total
royalties payable to BBWI.
6.4 Payments provided for in this Agreement, if overdue, will bear
an annual
interest of three percent (3%) in excess of the "Prime Rate"
published by "The
Wall Street Journal" at the time the payment is due, and for the
time period
until payment is received by BBWI. Payments that become more than
ninety (90)
days overdue will place TETRIDYN in default of this Agreement.
6.5 If this Agreement is terminated before all payments required up
to the
termination date under this Agreement have been made, TETRIDYN
sh
