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Title: |
Exclusive License and Bailment Agreement |
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Date: |
2000 |
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$39 |
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#285902 |
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EXCLUSIVE LICENSE AND BAILMENT AGREEMENT BETWEEN
--------------------------------------------------
BRIGHAM YOUNG UNIVERSITY AND BIOPULSE, INC.
---------------------------------------------
1 Definitions . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1
2 BYU Grant . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3
3 Licensee Grant . . . . . . . . . . . . . . . . . . . . . . . . . . .5
4 Exclusive Use . . . . . . . . . . . . . . . . . . . . . . . . . . . .5
5 Performance Requirements. . . . . . . . . . . . . . . . . . . . . . .6
6 Antibody and Antigen Production . . . . . . . . . . . . . . . . . . .7
7 License Fees and Royalties. . . . . . . . . . . . . . . . . . . . . .7
8 Reports, Records, Penalties and Interest. . . . . . . . . . . . . . .8
9 Confidentiality . . . . . . . . . . . . . . . . . . . . . . . . . . .9
10 Separate Service Agreement. . . . . . . . . . . . . . . . . . . . . 10
11 Export Controls . . . . . . . . . . . . . . . . . . . . . . . . . . 10
12 Patent Marking and Copyright Notice . . . . . . . . . . . . . . . . 11
13 Patent Prosecution and Maintenance . . . . . . . . . . . . . . . . 11
14 Infringement. . . . . . . . . . . . . . . . . . . . . . . . . . . . 11
15 Warranty and Limitation of Remedy . . . . . . . . . . . . . . . . . 13
16 Product Liability and General Indemnification . . . . . . . . . . . 14
17 Term and Termination. . . . . . . . . . . . . . . . . . . . . . . . 14
18 Negotiations, Mediation and Arbitration . . . . . . . . . . . . . . 16
19 Licensee Assignment . . . . . . . . . . . . . . . . . . . . . . . . 17
20 Non Use of BYU Name . . . . . . . . . . . . . . . . . . . . . . . . 17
21 Publication . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
22 Payment, Notices and Other Communications . . . . . . . . . . . . . 17
23 Miscellaneous Provisions. . . . . . . . . . . . . . . . . . . . . . 18
{/Page}
{PAGE}
EXCLUSIVE LICENSE AND BAILMENT AGREEMENT
BRIGHAM YOUNG UNIVERSITY
This Agreement, effective Dec. 1, 2000, is entered into between Brigham
Young University, a Utah non-profit corporation and educational institution
with its principal campus and place of business located at Provo, Utah
84602 (referred to in this Agreement as "BYU"), and Biopulse, Inc., a
Nevada corporation with its principal place of business located at South
Jordan, Utah 84095 (referred to in this Agreement as "LICENSEE").
RECITALS
---------
1. BYU is the sole owner of certain intellectual property rights known as
"Thymidine Kinase Isoenzyme Diagnostics" and has the right to grant
licenses with respect to these rights, and is the sole owner of certain
biological materials known as "Thymidine Kinase Hybridomas" and has the
right to grant a bailment for use of these materials.
A. BYU is an institution of higher education and is not in the
business of commercially developing ideas, inventions, biological
materials, or other types of intellectual property, but it does desire to
have Thymidine Kinase Isoenzyme Diagnostics and Thymidine Kinase
Hybridomas available to the public and is willing to enter into a license
and bailment agreement for this purpose.
B. LICENSEE has represented to BYU that LICENSEE has the technical
and commercial ability, and the technical, financial and other resources
necessary to develop and sell products or services based upon Thymidine Kinase
Isoenzyme Diagnostics and Thymidine Kinase Hybridomas.
C. LICENSEE desires to obtain a license to Thymidine Kinase Isoenzyme
Diagnostics and a bailment for the use of Thymidine Kinase Hybridomas upon the
terms and conditions of this Agreement.
In consideration of the promises and mutual covenants contained in
this Agreement the parties agree as follows:
TERMS OF AGREEMENT
-------------------
1 Definitions
For the purposes of this Agreement, the following terms, words and
phrases shall have the meaning ascribed to them in this Section.
1
{/Page}
{PAGE}
1.1 "ADJUSTED GROSS SALES" shall mean LICENSEE's gross receipts or
the fair market monetary equivalent value of consideration received for
LICENSED PRODUCTS or PROCESSES, including product or process IMPROVEMENTS,
sold, leased, licensed or otherwise transferred by LICENSEE, a SUBLICENSEE
or as otherwise authorized by the express written concent of BYU to a third
party, less qualifying costs directly attributable to such sale, lease,
license or transfer actually allowed and borne by LICENSEE or a
SUBLICENSEE. Such qualifying costs shall be limited to the costs of the
following:
A. Trade or quantity discounts actually allowed and taken in
such amounts as are customary in the trade;
B. Sales, import and export duties and/or use and excise taxes
directly imposed with reference to particular sales;
C. Outbound transportation expenses prepaid or allowed; and
D. Amounts allowed or credited by reason of timely rejections
or returns.
No deductions shall be made for commissions paid to individuals,
whether they be regularly employed by LICENSEE or by independent sales
agents, or for the cost of collections. For purposes of calculating
"ADJUSTED GROSS SALES" a LICENSED PRODUCT or PROCESS shall be considered
sold, leased, licensed or transferred when billed, invoiced, shipped, paid
for or transferred, whichever event occurs first.
1.2 "AFFILIATE" shall mean any person or entity owned or controlled
directly or indirectly by LICENSEE or any person or other entity controlled
by, controlling, or under common control with LICENSEE. The term "control"
means possession, direct or indirect, of the powers to direct or cause the
direction of the management and policies of a person or entity; whether
through ownership, voting securities, beneficial interests; by contract; by
agreement; or otherwise.
1.3 "BIOLOGICAL MATERIAL" shall mean the original cell culture lines
referred to in this agreement as "Thymidine Kinase Hybridomas" specifically
identified and delimited on Exhibit "A", which is attached to this
Agreement and by reference is incorporated and made part of this Agreement,
plus the progeny descendant from the original cell culture lines, and any
modifications or derivatives created by LICENSEE such as a functional sub-
unit or an expression product of the original cell culture lines
1.4 "END USER" means any person or entity to which LICENSED PRODUCTS
or LICENSED PROCESSES are sold or licensed for personal or business use and
not for the purpose of licensing or selling to other persons or entities.
1.5 "IMPROVEMENT(S)" means any invention, idea, trade secret,
know-how or derivative work which is directly related to or which includes
any portion of or utilizes any portion of the LICENSED TECHNOLOGY,
LICENSED PRODUCTS or LICENSED PROCESSES, whether or not patentable,
copyrightable, or otherwise protectable as intellectual property which is
subsequently acquired or developed by LICENSEE during the term of this
Agreement.
2
{/Page}
{PAGE}
1.6 "LICENSED PROCESS(ES)" means and includes any process, procedure,
technique, method or service the use or practice of which incorporates or
makes use of any part of the LICENSED TECHNOLOGY, BIOLOGICAL MATERIAL or
IMPROVEMENTS.
1.7 "LICENSED PRODUCT(S)" means and includes any product or
IMPROVEMENTS which are developed, or enhanced in whole or in part by
LICENSEE, the production, manufacture, sale, lease, license, transfer or
use of which incorporates or makes use of any part of or is derived from
the use of the LICENSED TECHNOLOGY, BIOLOGICAL MATERIAL or IMPROVEMENTS.
In the event such a product forms an integral part or component of a larger
product, such larger product shall be considered a "LICENSED PRODUCT," for
purposes of this Agreement.
1.8 "LICENSED TECHNOLOGY" means and includes all of BYU's technology
and intellectual property, patented or unpatented, referred to in this
Agreement as Thymidine Kinase Isoenzyme Diagnostics and related
enhancements generated at BYU as specifically identified and limited on
Exhibit "B", which is attached to this Agreement and by reference is
incorporated and made part of this Agreement.
1.9 "LICENSEE" is Biopulse, Inc. and its AFFILIATES, and any other
person or entity that becomes a successor in interest to, purchases, merges
with, assumes control of, or becomes an assignee of LICENSEE.
1.10 "SUBLICENSEE" is any person or entity including value added
retailers or other individuals or entities, which are licensed pursuant to
this Agreement by LICENSEE with rights to the LICENSED TECHNOLOGY to market
to END USERS LICENSED PRODUCTS or LICENSED PROCESSES which are developed,
enhanced, improved or manufactured by said person or entity.
1.11 "TERRITORY" is all of the world subject to an existing option
agreement between BYU and E. Excel Laboratories, Inc. which covers rights
in the countries of Japan, China, Taiwan, Korea, Malaysia, Indonesia,
Philippines and Singapore.
2 BYU Grant
2.1 Subject to the provisions of Section 2.6, BYU hereby grants
LICENSEE an exclusive right and license to utilize the LICENSED TECHNOLOGY
(i) to develop LICENSED PRODUCTS, LICENSED PROCESSES, and IMPROVEMENTS,
(ii) to manufacture, sell, lease and otherwise transfer in vitro serum
diagnostic LICENSED PRODUCTS and other LICENSED PRODUCTS, LICENSED
PROCESSES, and IMPROVEMENTS, and (iii) to practice LICENSED PROCESSES
within the TERRITORY as authorized in this Agreement until such time as
this Agreement expires or is terminated. This grant will extend to the
manufacture, sale, lease, transfer or other disposition of LICENSED
PRODUCTS or LICENSED PROCESSES within the TERRITORY through an AFFILIATE or
through LICENSEE's use of any retail outlet or distributor and shall
authorize any END USERS' use of the LICENSED PRODUCTS and LICENSED
PROCESSES sold or transferred by LICENSEE or its AFFILIATES, retail outlets
or distributors.
3
{/Page}
{PAGE}
2.2 Subject to the provisions of Section 2.6, BYU hereby grants
LICENSEE exclusive bailment rights to utilize BYU's BIOLOGICAL MATERIAL (i)
to produce antigens and monoclonal antibodies for use in in vitro
diagnostic LICENSED PRODUCTS and LICENSED PROCESSES , (ii) to develop
LICENSED PRODUCTS, LICENSED PROCESSES and IMPROVEMENTS, (iii) to
manufacture, sell, lease and otherwise transfer LICENSED PRODUCTS and
IMPROVEMENTS, and (iv) to practice LICENSED PROCESSES within the TERRITORY
as authorized in this Agreement until such time as this Agreement expires
or is terminated. This grant will extend to the manufacture, sale, lease,
transfer or other disposition of LICENSED PRODUCTS or LICENSED PROCESSES
within the TERRITORY through an AFFILIATE or through LICENSEE's use of any
retail outlet or distributor and shall authorize any END USERS' use of the
LICENSED PRODUCTS and LICENSED PROCESSES sold or transferred by LICENSEE or
its AFFILIATES, retail outlets or distributors.
2.3 The grants provided under this Agreement shall specifically
include the right for LICENSEE to grant sublicenses to the LICENSED
TECHNOLOGY to SUBLICENSEES. All sublicenses granted by LICENSEE shall be
subject to the terms and conditions of this Agreement and the sublicense
agreement shall have an express provision to this effect. No sublicense
shall relieve LICENSEE of any of its obligations under this Agreement.
Sublicenses under this Agreement shall be structured to guarantee the
payment of royalties to BYU in an amount at least equal to the amount of
royalties which BYU would have received from LICENSEE had LICENSEE made,
sold, leased, or otherwise transferred the LICENSED PRODUCTS or LICENSED
PROCESS(ES) authorized in the sublicense. LICENSEE agrees to forward to
BYU a fully executed copy of each sublicense agreement within thirty (30)
days upon written request from BYU, and to act as a fiduciary to protect
BYU's interests in the sublicense and to collect and transmit to BYU all
royalties due.
2.4 LICENSEE hereby agrees that the title to the BIOLOGICAL MATERIAL
remains with BYU, and LICENSEE agrees, notwithstanding any contrary rights
stipulated, implied or inferred from this Agreement, to not transfer BYU's
BIOLOGICAL MATERIAL to any third party for any purpose without BYU's
express written permission, which permission BYU may withhold at its sole
discretion. LICENSEE may, however, with BYU's permission, transfer BYU's
BIOLOGICAL MATERIAL to a SUBLICENSEE or to another third party to produce a
product (e.g., monoclonal antibodies) for LICENSEE under a contract which
preserves all of BYU's rights set forth in this Agreement, including title
to the BIOLOGICAL MATERIAL. Furthermore, LICENSEE hereby agrees and will
require any SUBLICENSEE or third party which receives BIOLOGICAL MATERIAL
as authorized in this section, to label all storage containers containing
the BIOLOGICAL MATERIAL as being owned by BYU.
4
{/Page}
{PAGE}
2.5 Nothing in this Agreement shall be considered as granting any
rights, express or implied, in BYU's patents, patent applications,
inventions, methods, technical, confidential or proprietary information,
expertise, know-how, trade secrets or knowledge not specifically licensed
in this Agreement, and all rights not expressly granted by this Agreement
to LICENSEE are expressly reserved by BYU. The license granted by this
Agreement shall not be construed to confer any rights upon LICENSEE by
implication, estoppel or otherwise as to any existing, new or derivative
technology not specifically licensed by this Agreement. The reservation of
rights described in this Section is intended to be broadly construed and
not to be limited by the definitions set forth in this Agreement.
2.6 Notwithstanding the exclusive license granted pursuant to this
Agreement, BYU shall have the right to make, have made or use the LICENSED
TECHNOLOGY, LICENSED PRODUCTS, LICENSED PROCESSES and IMPROVEMENTS for
continuing research and non-commercial academic uses without cost.
Moreover, LICENSEE shall provide BYU with a reasonable number of its serum
ELISA diagnostic kits and any other related kits free of charge for use in
BYU's research program.
3. Licensee Grant
LICENSEE hereby grants to BYU all of LICENSEE's right, title and
interest to any IMPROVEMENTS to the LICENSED TECHNOLOGY which are
incorporated into the LICENSED PRODUCTS or LICENSED PROCESSES of any kind
or description created or developed by LICENSEE or its SUBLICENSEES. This
grant shall be absolute and irrevocable, shall survive the termination of
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