Attached files
EXCLUSIVE LICENSE AGREEMENT
Between
UNIVERSITY OF MARYLAND, BALTIMORE COUNTY
&
FLUOROMETRIX CORPORATION
Effective
January 31, 2001
LICENSE AGREEMENT
This License Agreement (the "Agreement") is entered into by and
between University of Maryland, Baltimore County, having an address of
1000 Hilltop Circle, Baltimore, Maryland 21250, a constituent
institution of the University System of Maryland, which is an agency of
the State of Maryland (hereinafter "UMBC"); and Fluorometrix Corporation,
a Massachusetts corporation having an address of P.O. Box 816, Stow,
Massachusetts 01775-0816 (hereinafter "FLUOROMETRIX").
WITNESSTH:
WHEREAS, UMBC is interested in licensing PATENT RIGHTS and
KNOW-HOW (hereinafter defined) in a manner that will benefit the public
by facilitating the distribution of useful products and the utilization
of new methods, and as a center for research and education, UMBC is
without capacity to commercially develop, manufacture, and distribute
any such products or methods; and
WHEREAS, a valuable invention entitled "Microbioreactor Apparatus
and Technique for High Throughput Bioprocessing" (UMBC Ref. 2343GR) was
developed during the course of research conducted by Dr. Govind Rao
(hereinafter collectively, the "Inventor"); and
WHEREAS, UMBC has acquired through assignment all rights, title and
interest to said valuable invention from the Inventories; and
WHEREAS, FLUOROMETRIX desires to commercially develop, manufacture,
use and distribute products and processes derived from said invention
throughout the world, but is unable to do so without a license from
UMBC.
NOW THEREFORE, in consideration of the foregoing premises and the
following mutual covenants, and for other good and valuable consideration,
the receipt and sufficiency of which is hereby acknowledge, the parties
hereto agree as follows:
ARTICLE I - DEFINITIONS
All references to particular Exhibits and Articles shall mean the
Exhibits to, and Articles of, this Agreement, unless otherwise specified.
For the purposes of this Agreement and the Exhibits hereto, the following
words and phrases shall have the following meanings:
1.1 "PATENT RIGHTS" shall mean the U.S. patent application Serial No.
06/225108 filed on August 14, 2000, and assigned to UMBC entitled
"Microbioreactor Apparatus and Technique for High Throughput
Bioprocessing" and the invention disclosed and claimed therein, and all
continuations, divisions, reissues, and extensions thereof, and any
Letters Patent issuing on any of the foregoing; and any corresponding
foreign patent applications, and any patens, patens of addition, or
other equivalent foreign patent rights issuing, granted or registered
thereon.
1.2 "KNOW-HOW" shall mean any tangible know-how owned by UMBC and
provided to FLUOROMETRIX related to the invention described in the
PATENT RIGHTS, including any engineering drawings, materials, or
software.
1.3 "LICENSED PRODUCT" as used herein in either singular or plural
shall mean any material, compositions, device, or other product, the
manufacture, use or sale of which uses or incorporates KNOW-HOW or
would constitute, but for the license granted to FLUOROMETRIX pursuant
to this Agreement, an infringement of an issued
or pending claim of PATENT RIGHTS (infringement shall include, but
is not limited to, direct, contributory, or inducement to infringe).
1.4 "LICENSED SERVICE" as used herein in either singular or plural
shall mean the performance of any method, or the manufacture of any
product, or the use of any product or composition that uses or
incorporates KNOW-HOW or would constitute, but for the license granted
to FLUOROMETRIX pursuant to this Agreement, an infringement of an
issued or pending claim of PATENT RIGHTS (infringement shall include,
but not be limited to, direct, contributory or inducement to infringe).
1.5 "NET SALES" shall mean gross sales receipts and fees received by
FLUOROMETRIX and SUBLICENSEES from the sale of LICENSED
PRODUCTS less trade discounts allowed, refunds, returns and recalls,
and sales taxes. In the event that FLUOROMETRIX or a SUBLICENSEE
sells a LICENSED PRODUCT in combination with other components,
devices or as part of a system, the NET SALES for purposes of royalty
payments shall be calculated as follows:
(a) If the LICENSED PROUDCTS contained in the combination are
available separately, the NET SALES for purposes of royalty
payments will be calculated by multiplying the NET SALES of the
entire combination by the fraction A/B where A is the separately
available price of all LICENSED PROUDCTS in the combination,
and B is the invoiced price of the entire combination.
(b) If the LICENSED PRODUCTS contained in the combination are not
available separately, the NET SALES for purposes of royalty
payments will be calculated by multiplying the NET SALES of the
entire combination by the fraction C/(C+D), where C is the cost of
producing all of the
LICENSE PRODUCTS in the combination, and D is the cost of producing
all other items in the combination.
1.6 "NET SERVICE REVENUES" shall mean gross service receipts and
fees received by FLUOROMETRIX ad SUBLICENSEES for the performance of
LICENSED SERVICES less sales and/or use taxes imposed upon and
with specific reference to the LICENSED SERVICE. In the event that
FLUOROMETRIX or a SUBLICENSEE sells a LICENSED SERVICE in combination
with other servic4es or products, including but not limited to LICENSED
PRODUCTS, the NET SERVICE REVENUES for purposes of royalty payments
shall be calculated as follows:
(a) If the LICENSED PRODUCTS and LICENSED SERVICES
contained in the combination are all available separately, the NET
SERVICES for purposes of royalty payments will be calculated by
multiplying the NET SERVCIE REVENUES of the entire
combination by the fraction E/F, where E is the sum of the
separately available prices of all LICENSED PRODUCTS and
LICENSED SERVICES in the combination, and F is the invoiced
price of the entire combination.
(b) If the LICENSED PRODUCTS and LICENSED SERVICES
contained in the combination are not available separately, the NET
SERVICE REVENUES for purposes of royalty payment will be calculated
by multiplying the NET SERVICE REVENUES of the entire combination by
the fraction G/(G+H), where G is the cost of producing all of the
LICENSED PRODUCTS and LICENSED SERVICES in the
combination, and H is the cost of producing all other items in the
combination.
1.7 "EXCLUSIVE LICENSE" shall mean a grant by UMBC to
FLUOROMETRIX of its entire right and interest in the PATENT RIGHTS
and KNOW-HOW subject to the retained right of UMBC to make, have
made, and use LICENSED PRODUCTS and LICENSED SERVICES for
and educational purposes.
1.8 "AFFILIATED COMPANY" as used herein in either singular or plural
shall mean any corporation, company, partnership, joint venture or
other entity, which controls, is controlled by, or is under common
control with, FLUOROMETRIX. For purposes of this Paragraph, 'control'
shall mean the direct or indirect ownership of al least fifty-percent
(50%).
1.9 "SUBLICENSEE" as used herein in either singular or plural shall
mean any person or entity to which FLUOROMETRIX has granted a sublicense
under this Agreement.
1.10 "EFFECTIVE DATE" shall mean the date the last party hereto has
executed this Agreement.
ARTICLE II - LICENSE GRANT
2.1 Grant. Subject to the terms and conditions of this Agreement,
UMBC hereby grants to FLUOROMETRIX and EXCLUSIVE LICENSE to make,
have made, use, and sell LICENSED PRODUCTS and to provide LICENSED
SERVICES in the United States and worldwide under the PATENT RIGHTS
and KNOW-HOW.
2.2. Right to Sublicense. FLUOROMETRIX may sublicense others under this
Agreement, subject to UMBC's approval, which shall not be unreasonably
withheld, and shall provide a copy of each such sublicense agreement to
UMBC promptly after it is executed. Each sublicense shall be consistent
with the terms of the Agreement.
ARTICLE III - FEES, ROYALTIES, & PAYMENTS
3.1 License Fees and Equity. FLUOROMETRIX shall pay to UMBC the
following fees and equity:
3.1.1 License Fees. Within thirty (30) days of the EFFECTIVE DATE of
this Agreement, FLUOROMETRIX shall pay to UMBC five thousand dollars
($5,000) as a license fee, said license fee shall be nonrefundable and
shall not be credited against future royalties or other fees. UMBC
will not submit an invoice for the license fee.
3.1.2 Patent Issuance Fee. Within sixty (60) days of UMBC notifying
FLUOROMETRIX of the issuance of a first U.S. patent under PATENT
RIGHTS, FLUOROMETRIX shall pay to UMBC ten thousand dollars ($10,000).
3.1.3 Equity Consideration. Upon execution of this Agreement,
FLUOROMETRIX shall issue to UMBC a number of shares of FLUOROMETRIX'
common stock equal to one percent (1%) of FLUOROMETRIX total common
stock as of the EFFECTIVE DTE. In addition, FLUROMETRIX shall issue
to UMBC an option for an additional number of shares, at no cost,
equal to one percent (1%) of FLUOROMETRIX' total common stock as of
the EFFECTIVE DATE. UMBC shall have the right to exercise said
option at any time after the issuance of a first U.S. patent
included within PATENT RIGHTS. The equity
issued to UMBC pursuant to this paragraph shall be in accordance with
an appropriate stock issuance or shareholders' rights agreement that
shall grant UMBC information and visitation rights, piggyback
registration rights, and other rights shared by FLUOROMETRIX' common
stockholders as of the EFFECTIVE DATE. Said stock issuance or
shareholders'' rights agreement shall be attached to this Agreement as
Exhibit B.
3.2 Annual Fees. FLUOROMETRIX shall pay to UMBC annual fees in the
amounts se forth below:
DUE DATE ANNUAL FEE
_________________________ _______________________
Second Anniversary of the
EFFECTIVE DATE $10,000
Third Anniversary of the
EFFECTIVE DATE $25,000
Fourth Anniversary of the
EFFECTIVE DATE $50,000
Fifth and each subsequent
Anniversary of the
EFFECTIVE DATE $75,000
These annual fees shall be due within thirty (30) days of each
anniversary of the EFFECTIVE DATE beginning with the first such
anniversary. In any year where sales of LICENSED PRODUCTS or LICENSED
SERVICES exist, the annual fees shall be credited against running
royalties due in the following year).
3.3 Royalties. FLUOROMETRIX shall pay to UMBC eight percent (8%)
of NET SALE as a running royalty for each LICENSE DPRODUCT sold,
by FLUOROMETRIX and SUBLICENSEES for the term of this Agreement.
In addition, FLUOROMETRIX shall pay to UMBC twelve percent (12%)
of NET SERVICE REVENUES as a running royalty for reach LICENSED
SERVICE provided, by FLUOROMETRIX and SUBLICENSEES for the
term of this Agreement. Such
payments shall be made quarterly. All non-US taxes related to the
sales of LICENSED PRODUCTS or LICENSED SERVICES shall be paid by
FLUOROMETRIX and shall not be deducted from any royalty or other
payments due to UMBC.
In order to insure UMBC the full royalty payments contemplated
hereunder, FLUOROMETRIX agrees that in the event that any LICENSED
PRODUCT or LICENSED SERVICE shall be sold to an AFFILIATED COMPANY, or
any person, corporation, firm or association with which FLUOROMETRIX has
any agreement, understanding or arrangement with respect to consideration
(such as, among other things, an option to purchase stock or actual stock
ownership, or an arrangement involving division of profits or special
rebates or allowances), the royalties to be paid hereunder for any such
LICENSE PRODUCT or LICENSED SERVICE shall be based upon the greater of:
1) the net selling price at which the purchaser of LICENSE PRODUCTS
resells such products to the end user, 2) the NET SERVICE REVENUES
received from the use of a LICENSED PRODUCT in providing a service,
3) the fair market value of the LICENSED PRODUCT or LICENSED SERVICE,
which shall be determined based on the sales price of similar products
or services in the market, as applicable, or as may be mutually agreed
by the parties, or 4) the net selling price of LICENSED PRODUCTS or
LICENSED SERVICES paid by the purchaser.
3.4 Sublicense Consideration. In addition to the running royalty
due to UMBC as set forth in Paragraph 3.3, FLUOROMETRIX shall pay to
UMBC twenty percent (20%) of any consideration, other than royalty,
received by FLUOROMETRIX or an AFFILIATED COMPANY for the grant of any
sublicense under this Agreement, which is executed prior to a first
commercial sale of a LICENSED PRODUCT or LICENSED SERVICE.
FLUOROMETRIX shall pay to UMBC fifteen percent (15%) of any
consideration, other than royalty, received by FLUOROMETRIX or an
AFFILIATED COMPANY for the grant of any sublicense under this
agreement, which is executed subsequent to a first commercial sale
of a LICENSED PRODUCT or LICENSED
SERVICE. For the purpose of clarification, such consideration shall
include, without limitation, any licensing fees or other cash
consideration, and any premium paid by the SUBLICENSEE over Fair
Market Value for stock, or the right to purchase stock, of the
FLUOROMETRIX or an AFFILIATED COMPANY. The term "Fair Market Value"
shall mean the daily weighted average of the price at which said
stock is publicly trading during the period twenty (20) business
days prior to the effective date of said sublicense, or if the stock
is not publicly traded, the value of such stock as determined by the
most recent private financing though a Financial Investor in the
FLUOROMETRIX or AFFILIATED COMPANY that issued the shares. The term
"Financial Investor" shall mean an entity whose sole interest in
FLUOROMETRIX or AFFILIATED COMPANY is for the purpose of investment.
3.5 Reimbursement. FLUOROMETRIX will reimburse UMBC, within thirty
(30) days of the receipt of an invoice from UMBC, for all costs
(approximately $700) associated with the preparation, filing,
maintenance, and prosecution of PATENT RIGHTS incurred by UMBC on or
before the EFFECTIVE DATE of this Agreement. In accordance with
Paragraph 4.1 below, FLUOROMETRIX will also reimburse UMBC, within
thirty (30) days of the receipt of an invoice from UMBC, for all costs
associated with the preparation, filing, maintenance, and prosecution
of PATENT RIGHTS incurred by UMBC subsequent to the EFFECTIVE DATE of
this Agreement.
3.6 Form of Payment. All payments under this agreement shall be paid
to UMBC in United States Dollars by check or checks drawn to the order
of UMBC. Checks are to be made payable to "UMBC" and shall be sent to:
Bursar's Office
University of Maryland, Baltimore County
Administration Building
1000 Hilltop Circle
Baltimore, MD 21250
Ref. #2343GR
With a copy of the check and any related correspondence to:
Office of Technology Development
University of Maryland, Baltimore County
Administration Building
1000 Hilltop Circle
Baltimore, MD 21250
Attn: Director
3.7 Foreign Currency. To the extent NET SALES or NET SERVICE
REVENUES may have been made by FLUOROMETRIX or a
SUBLICENSEE in a foreign country, any royalties due to UMBC based
thereon shall be first determined in the currency of the country in which
the royalties were earned and then converted to their equivalent in
United States Dollars using an average of the currency exchange rates
quoted in the Wall Street Journal for the last business day of each of
the three (3) consecutive calendar months constituting the calendar
quarter in which the royalties were earned. To the extent that statutes,
laws, codes, or government regulations (including currency exchange
regulations) shall prevent or limit royalty payments by FLUOROMETRIX
or its SUBLICENSEES in any country, all monies due to UMBC shall promptly
be deposited by FLUOROMETRIX or its SUBLICENSEE, as the case may be, in
an account in a local bank in such country where such payment or deposit
is lawful under the currency restrictions, as directed in writing by
UMBC.
3.8 Late payments. In the event that any payment due hereunder is not
made when due, the payment shall accrue interest beginning on the tenth
day following the due date thereof, calculated at the annual rate of the
sum of (a) two percent (2%) plus (b) the prime interest rate quoted by
The Wall Street Journal on the date said payment is due, the interest
being compounded on the last day of each calendar
quarter, provide however, that in no event shall said annual interest
rate exceed the maximum legal interest rate for corporations. Each
such payment when made shall be accompanied by all interest so accrued.
Said interest and the payment and acceptance thereof shall not negate or
waive the right of UMBC to seek any other remedy, legal or equitable,
to which it may be entitled because of delinquency of any payment
including, but not limited to termination of this Agreement as set
forth in Paragraph 9.2
ARTICLE IV - PATENT PROSECTUION, MAINTENANCE, & INFRINGEMENT
4.1 Prosecution & Maintenance. UMBC, at FLUOROMETRIX' expense, shall
file, prosecute and maintain all patents and patent applications
specified under PATENT RIGHTS upon authorization of FLUOROMETRIX and
FLUOROMETRIX shall be licensed hereunder. Title to all such patents
and patent applications shall reside in UMBC. UMBC shall have full and
complete control over all patent matters related to the PATENT RIGHTS,
provided however, that UMBC will consider and incorporate reasonable
comments received from FLUOROMETRIX. FLUOROMETRIX will provide payment
authorization to UMBC at least one (1) month before an action is due,
provided that FLUOROMETRIX has received timely notice of such action
from UMBC. Failure to provide authorization can be considered by UMBC
as a FLUOROMETRIX decision not to authorize an action. In any country
where FLUOROMETRIX elects not to have a patent application filed or to
pay expenses associated with filing, prosecution, or maintenance of a
patent application or patent, UMBC may file, prosecute, and/or maintain
the patent application or patent at its own expense and for its own
exclusive benefit and FLUOROMETRIX thereafter shall not be licensed
under such patent or patent application.
4.2 Notification. Each party will notify the other promptly in
writing when any infringement by another is uncovered or suspected.
4.3 Infringement. FLUOROMETRIX shall have the first right to enforce
any patent within PATENT RIGHTS against any infringement or alleged
infringement thereof, and shall at all times keep UMBC informed as to
the status thereof. FLUOROMETRIX may, in its sole judgment an at its
own expense, institute suit against any such infringer or alleged
infringer and control, settle, and defend such suit in a manner
consistent with the terms and provisions hereof and recover, for
its account
subject to Paragraph 4.4, any damages, awards or settlements resulting
therefrom. This right to sue for infringement shall not be used in an
arbitrary or capricious manner. UMBC shall reasonably cooperate in any
such litigation at FLUOROMETRIX' expense.
If FLUOROMETRIX elects not to enforce any patent within the PATENT
RIGHTS, then it shall so notify UMBC in writing within ninety (90) days
of receiving notice that an infringement exists, and UMBC may, in its
sole judgment and at its own expense, take steps to enforce any patent
and control, settle, and defend such suit in a manner consistent with
the terms and provisions hereof, and recover, for its own account, any
damages, awards or settlements resulting therefrom.
4.4 Recovery. Any recovery by FLUOROMETRIX under Paragraph 4.3 shall
be deemed to reflect loss of commercial sales, and FLUOROMETRIX
shall pay to UMBC fifteen percent (15%) of the recovery net of all
reasonable costs and expenses associated with each suit or settlement.
If the cost and expenses exceed the recovery, then one-half (1/2) of the
excess shall be credited against royalties payable by FLUOROMETRIX to
UMBC hereunder in connection with sales in the country of such legal
proceedings, provided, however, that any such credit under this
Paragraph shall not exceed fifty percent (50%) of the royalties otherwise
payable to UMBC with regard to sale sin the country of such action in any
one calendar year, with any excess credit being carried forward to future
calendar years.
ARTICLE V - OBLIGATIONS OF THE PARTIES
5.1 Reports. FLUOROMETRIX shall provide to UMBC within thirty
(30 days of the end of each March, June, September and December
after the EFFECTIVE DATE of this Agreement, a written report to
UMBC of the amount of LICENSED PRODUCTS sold, and LICENSED SERVICES
sold, the total NET SALES and NET SERVICE
REVENUES by FLUOROMETRIX, AFFILIATED COMPANIES, and SUBLICENSEES,
Payment of any such royalties due shall accompany such report. The
report of sales and royalties due shall be substantially in the format
of the sales and royalty report form given in Exhibit A. Until
FLUOROMETRIX or a SUBLICENSEE has achieved a first commercial sale of
a LICENSED PRODUCT or LICENSED SERVICE, a report shall be submitted
at the end of every March and September after the EFFECTIVE DATE of
this Agreement and will include a full written report describing
FLUOROMETRIX' or any SUBLICENSEE's technical efforts towards meeting
its obligations under the terms of this Agreement as set forth in
Paragraph 5.3
5.2 Records. FLUOROMETRIX shall make an retain, for a period of three
(3) years following the period of each report required by Paragraph 5.1,
true and accurate records, files and books of account containing all the
data reasonably required for a full computation and verification of sale
and other information required in Paragraph 5.1 Such books and records
shall be in accordance with generally accepted accounting principles
consistently applied. FLUOROMETRIX shall permit the inspection and
copying of such records, files and books of account by UMBC or its agents
during regular business hours upon ten (10) business days' written notice
to FLUOROMETRIX. Such inspection shall not be made more than once each
calendar year. All costs of such inspection and copying shall be paid
by UMBC, provided that if any such inspection shall reveal that an error
has been made in the amount equal to five percent (5%) or more of such
payment, such costs shall be borne by FLUOROMETRIX. FLUOROMETRIX
shall include in any agreement with its AFFILIATED COMPANIES or its
SUBLICENSEES which permits such party to make, use or sell LICENSED
PRODUCTS or provide LICENSED SERVICES, a provision requiring such
party to retain records of sales of LICENSED PRODUCTS and
LICENSED SERVICES and other information as required in Paragraph 5.1
and to permit UMBC to inspect such records as required by this
Paragraph.
5.3 Best Efforts. FLUOROMETRIX shall exercise best efforts to
develop and to introduce a first LICENSED PRODUCT or LICENSED SERVICE
into the commercial market as soon as practicable, consistent with
sound and reasonable business practice and judgment; thereafter, until
the expiration of the Agreement, FLUOROMETRIX shall endeavor to keep
LICENSED PRODUCTS and LICENSED SERVICES reasonably available to the
public.
5.4 Other Products. In the event that evidence is provided, in
writing by UMBC or by another party, to FLUOROMETRIX, demonstrating the
practicality of a particular market which is not being developed or
commercialized by FLUOROMETRIX, FLUOROMETRIX shall either provide UMBC
with a reasonable development plan and start development or attempt
to reasonably sublicense the particular technology to a third party.
If within six (6) months of such notification by UMBC, FLUOROMETRIX
has not initiated such development efforts or sublicensed that
particular market, UMBC may terminate this license for such particular
market. This Paragraph shall not be applicable if FLUOROMETRIX
reasonably demonstrates to UMBC that commercializing LICENSED PRODUCTS
or LICENSED SERVICES or granting such a sublicense in said particular
market would have a potentially adverse commercial effect upon
marketing or sales of the LICENSED PRODUCTS or LICENSED SERVICES
developed and being sold by FLUOROMETRIX or its SUBLICENSEES.
5.5 Patent Acknowledgment. FLUOROMETRIX agrees that all packaging
containing individual LICENSED PRODUCTS sold by FLUOROMETRIX and
SUBLICENSEES will be marked with the number of the applicable patent(s)
licensed hereunder in accordance with each country's patent laws.
ARTICLE VI - REPRESENTATIONS
6.1 Representations by UMBC. UMBC warrants that it has good and
marketable title to its interest in the inventions claimed under
PATENT RIGHTS with the exception of certain rights of the United
States government. ESCEPT AS EXPRESSLY SET FORTH IN THIS
PARAGRAPH 6.1, FLUOROMETRIX, AFFILIATED COMPANIES AND
SUBLICENSEES AGREE THAT THE PATENT RIGHTS ARE PROVIDED
"AS IS", AND THAT UMBC MAKES NO REPRESENTATION OR
WARRANTY WITH RESPECT TO THE PERFORMANCE OF LICENSED
PRODUCTS AND LICENSED SERVICES INCUDING THEIR SAFETY,
EFFECTIVENESS, OR COMMERCIAL VIABILITY. UMBC MAKES NO
REPRESENTATION AS TO THE VALIDITY OF THE PATENT RIGHTS
OR THAT ANY PRACTICE UNDER THE PATENT RIGHTS SHALL BE
FREE OF INFRINGEMENT OF ANOTHER PATENT OR OTHER
PROPRIETARY ERIGHT NOT GRANTED TO FLUOROMETRIX
HEREUNDER. UMBC DISCLAIMS ALL WARRANTIES WITH REGARD
TO PRODUCTS AND SERVICES LICENSED UNDER THIS
AGREEMENT, INCLUDING, BUT NOT LIMITED TO, ALL WARRANTIES,
EXPRESS OR IMPLIED, OF MERCHANTABILITY AND FITNESS FOR
ANY PARTICULAR PURPOSE. NOTWITHSTANDING ANY OTHER
PROVISION OF THIS AGREEMENT, UMBC ADDITIONALLY
DISCLAIMS ALL OBLIGATIONS AND LIABILITIES ON THE PART OF
UMBC AND INVENTORS, FOR DAMAGES, INCLUDING, BUT NOT
LIMITED TO, DIRECT, INDIRECT, SPECIAL, AND CONSEQUENTIAL
DAMAGES, ATTORNEYS' AND EXPERTS' FEES, AND COURT COSTS
(EVEN IF UMBC HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES, FEES OR COSTS), ARISING OUT OF OR IN CONNECTION
WITH THE MANUFACURE, USE, OR SALE OF THE PRODUCT AND
SERVICE LICENSED
UNDER THIS AGREEMENT. FLUOROMETRIX, AFFILIATED
COMPANIES AND SUBLICENSEES ASSUME ALL RESPONSIBILITY
AND LIABILITY FOR LOSS OR DAMAGE CAUSED BY A PRODUCT
AND SERVICE MANUFACTURED, USED, OR SOLD BY FLUOROMETRIX,
ITS SUBLICENSEES AND AFFILIATED COMPANIES WHICH IS A
LICENSED PRODUCT OR LICENSED SERVICE AS DEFINED IN THIS
AGREEMENT.
ARTICLE VII - INDEMNIFICATION
7.1 Indemnification. UMBC and the Inventors of PATENT RIGHTS will
not, under the provisions of this Agreement or otherwise, have control
over the manner in which FLUOROMETRIX or its AFFILIATED COMPANIES or its
SUBLICENSEES or those operating for its account or third parties who
purchase LICENSED PRODUCTS or LICENSED SERVICES from any of
the foregoing entities, practice the PATENT RIGHTS or LICENSED
PRODUCTS and LICENSED SERVICES. FLUOROMETRIX shall defend
and hold UMB, The University System of Maryland, the State of Maryland,
their present and former trustees, officers, Inventors, agents, faculty,
employees and students, as applicable, harmless as against any judgments,
fees, expenses, or other costs arising from or incidental to any product
liability or other lawsuit, claim, demand or other action brought as
a consequence of the practice of said inventions by any of the foregoing
entities, whether or not UMBC or said Inventors, either jointly or
severally, is named as a party defendant in any such lawsuit. Practice
of the inventions covered by the PATENT RIGHTS, by an AFFILIATED
COMPANY or an agent or a SUBLICENSEE or a third party on behalf of
or for the account of FLUOROMETRIX or by a third party who purchases
LICENSED PRODUCTS and LICENSED SERVICES from FLUOROMETRIX, an
AFFILIATED COMPANY, or a SUBLICENSEE, shall be considered FLUOROMETRIX'
practice of said inventions for
purposes of this Paragraph. The obligation of FLUOROMETRIX to defend
and indemnify, as set out in this Paragraph, shall survive the termination
of this Agreement.
ARTICLE VIII - CONFIDENTIALITY
8.1 Confidentiality. If necessary, the parties will exchange
information that they consider to be confidential. The recipient
of such information agrees to accept the disclosure of said information
which is marked as confidential at the time it is sent to the recipient,
and to employ all reasonable efforts to maintain the information secret
and confidential, such efforts to be no less than the degree of care
employed by the recipient to preserve and safeguard its own confidential
information. The information shall not be disclosed or revealed to
anyone except employees of the recipient who have a need to know the
information and who have entered into a secrecy agreement with the
recipient under which such employees are required to maintain
confidential the proprietary information of the recipient an such
employees shall be advised by the recipient of the confidential nature
of the information and that the information shall be treated accordingly.
The obligations of this Paragraph shall also apply to AFFILIATED
COMPANIES and/or SUBLICENSEES provided such information by
FLUOROMETRIX. UMBC's, FLUOROMETRIX', AFFILIATED COMPANIES', and
SUBLICENSEES' obligations under this Paragraph shall extend until three
(3) years after the termination of this Agreement.
8.2 Exceptions. The recipient's obligations under Paragraph 8.1
shall not extend to any part of the information:
a. that can be demonstrated to have been in the public domain
or publicly known and readily available to the trade or the
public prior to the date of the disclosure; or
b. that can be demonstrated, from written records to have been
in the recipient's possession or readily available to the
recipient from another source not under obligation of secrecy
to the disclosing party prior to the disclosure; or
c. that becomes part of the public domain or publicly known by
publication or otherwise, not due to any unauthorized act by
the recipient; or
d. that is demonstrated from written records to have been
developed by or for the receiving party without reference to
confidential information disclosed by the disclosing party.
e. That is required to be disclosed by law, government
regulation or court order.
8.3 Right to Publish. UMBC may publish manuscripts, abstracts or the
like describing the PATENT RIGHTS and inventions contained therein
provided confidential information of FLUOROMETRIX as defined in
Paragraph 8.1, is not included or without first obtaining approval from
FLUOROMETRIX to include such confidential information. Otherwise,
UMBC and the Inventors shall be free to publish manuscripts and
abstracts or the like directed to the work done at UMBC related to the
licensed technology without FLUOROMETRIX' prior approval.
ARTICLE IX - TERM & TERMINATION
9.1 Term. The term of this Agreement shall commence on the EFFECTIVE
DATE and shall continue, in each country, until the date of expiration
of the last to expire patent included within PATENT RIGHTS in that
country or if no patents issue then for a term of twenty (20) years from
the EFFECTIVE DATE of this Agreement. In the event that UMBC abandons
the last of all pending applications in any particular country where a
patent included under PATENT RIGHTS has not issued, or in the event that
UMBC does not file ay patent applications in any particular country, the
royalties due to UMBC pursuant to Paragraph 3.3 shall be reduced by fifty
percent (50%) in that country. In the event that (i) UMBC abandons the
last of all pending applications in the United States and (ii) a patent
included within PATENT RIGHTS has not issued in the United States, the
annual payments due to UMBC as set forth in Paragraph 3.2 shall be
reduced by fifty percent (50%).
9.2 Termination By Either Party. This Agreement may be terminated by
either party, in the event that the other party (a) files, or has filed
against it, a petition under the Bankruptcy Act, makes an assignment for
the benefit of creditors, has a receiver appointed for it or a substantial
part of its assets, or otherwise takes advantage of any statute or law
designed for relief of debtors or (b) fails to perform or otherwise
breaches any of its obligations hereunder, if, following the giving of
notice by the terminating party of its intent to terminate and stating
the grounds therefore, the party receiving such notice shall not have
cured the failure or breach within thirty (30) days. In no event,
however, shall such notice or intention to terminate be deemed to waive
any rights to damages or any other remedy that the party giving notice
of breach may have as a consequence of such failure or breach.
9.3 Termination by FLUOROMETRIX. FLUOROMETRIX may terminate this
Agreement and the license granted herein, for any reason, upon giving
UMBC sixty (60) days written notice.
9.4 Obligations and Duties upon Termination. If this Agreement is
terminated, both parties shall be released from all obligations and
duties imposed or assumed hereunder to the extent so terminated,
except as expressly provided to the contrary in this Agreement. Upon
termination, both parties shall cease any further use of the confidential
information disclosed to the receiving party by the other party.
Termination of this Agreement, for whatever reason, shall not affect
the obligation of either party to make any payments for which it is
liable prior to or upon such termination. Upon termination FLUOROMETRIX
shall submit a final royalty report to UMBC and any royalty payments and
unreimbursed patent expensed due UMBC shall become immediately due and
payable. Furthermore, upon termination of this Agreement, all rights in
and to the licensed technology shall revert immediately to UMBC at no
cost to UMBC. Upon termination of this Agreement, any SUBLICENSEE shall
become a direct licensee of UMBC. FLUOROMETRIX shall provide written
notice of such to each SUBLICENSEE with a copy of such notice provided
to UMBC.
ARTICLE X - MISCELLANEOUS
10.1 Use of Name. FLUOROMETRIX shall not use the name UMBC of The
University System of Maryland or any of its constituent parts, or any
contradiction thereof or the name of the Inventors of PATENT RIGHTS in
any advertising, promotional, sales literature or fundraising documents
without prior written consent from an officer of UMBC. FLUOROMETRIX
shall allow at least seven (7) business days notice of any
proposed public disclosure for UMBC's review and comment or to provide
written consent.
10.2 No Partnership. Nothing in this Agreement shall be construed to
create any agency, employment, partnership, joint venture or similar
relationship between the parties other than that of a license/licensee.
Neither party shall have any right or authority whatsoever to incur any
liability or obligation (express or implied) or otherwise act in any
manner in the name or on the behalf of the other, or to make any promise,
warranty or representation binding on the other.
10.3 Notice of claim. Each party shall give the other or its
representative immediate notice of any suit or action filed, or prompt
notice of any claim made, against them arising out of the performance of
this Agreement.
10.4 Product Liability. Prior to initial human testing or first
commercial sale of any LICENSED PRODUCT or LICENSE SERVICE, as the case
may be, in any particular country, FLUOROMETRIX shall establish and
maintain, in each country in which FLUOROMETRIX, an AFFILIATED COMPANY
or a SUBLICENSEE shall test or sell a LICENSED PRODUCT or
LICENSED SERVICE, product liability or other appropriate insurance
coverage appropriate to the risks involved in marketing LICENSED
PRODUCT and LICENSED SERVICE and will annually present evidence
to UMBC that such coverage is being maintained. Upon UMBC's request,
FLUOROMETRIX will furnish UMBC with a Certificate of Insurance of
each product liability insurance policy obtained. UMBC shall be listed as
an additional insured in FLUOROMETRIX' said insurance policies. If such
product liability insurance is underwritten on a 'claims made' basis,
FLUOROMETRIX agrees that any change in underwriters during the term
of this Agreement will require the purchase of 'prior acts' coverage to
ensure that coverage will be continuous throughout the term of this
Agreement.
10.5 Governing Law. This Agreement shall be construed, and legal
relations between the parties hereto shall be determined, in accordance
with the laws of the State of Maryland applicable to contracts solely
executed and wholly to be performed within the State of Maryland without
giving effect to the principles of conflicts of laws. Any disputes
between the parties to the Agreement shall be brought in the state of
federal courts of Maryland.
10.6 Notice. All notices or communication required or permitted to be
given by either party hereunder shall be deemed sufficiently given if
mailed by registered mail or certified mail or sent by overnight courier,
such as Federal express, to the other party at its respective address set
forth below or to such other address as one party shall give notice of
the other from time to time hereunder. Mailed notices shall be deemed
received on the third business day following the date of mailing. Notices
sent by overnight courier shall be deemed received the following business
day. Notices may be sent by facsimile provided that any notice sent by
facsimile is confirmed by registered mail or certified mail or sent by
overnight courier. Notices received by facsimile shall be deemed received
on the day UMBC receives such a facsimile at the number listed below.
If to FLUOROMETRIX:
Fluorometrix Corporation
Attn: Joe Qualitz
P. O. Box 816
Stow, Massachusetts 01775-0816
Facsimile: 801-730-9601
If to UMBC:
Office of Technology Development
University of Maryland, Baltimore County
Administration Building
1000 Hilltop Circle
Baltimore, MD 21250
Attn: Director
Facsimile: 410-455-1130
10.7 Compliance with All Laws. In all activities undertaken pursuant
to this Agreement, both UMBC and FLUOROMETRIX covenant and agree that
each will in all material respects comply with such federal, state and
local laws and statutes, as may be in effect at the time of performance
and all valid rules, regulations and order thereof regulating such
activities.
10.8 Successors and Assigns. Neither this Agreement nor any of the
rights or obligations created herein, except for the right to receive
any remuneration hereunder, may be assigned by either party, in whole
or in part, without the prior written consent of the other party, except
that either party shall be free to assign this Agreement in connection
with any sale of substantially all of its assets without the consent
of the other. Such assignment shall be subject to UMBC approval, which
approval shall not be unreasonably withheld. This Agreement shall bind
and inure to the benefit of the successors and permitted assigns of the
parties here. Any attempt to assign this Agreement other than as
expressly permitted by this Paragraph shall render the attempted
assignment null and void.
10.9 No Waivers; Severability. No Waiver of any breach of this
Agreement shall constitute a waiver of any other breach of the same or
other provision of this Agreement, and no waiver shall be effective
unless made in writing. Any provision hereof prohibited by or
unenforceable under any applicable law of any jurisdiction shall as
to such jurisdiction be deemed ineffective and deleted herefrom
without affecting any other provision of this Agreement. It is the
desire of the parties hereto that this Agreement be enforced to the
maximum extent permitted by law, and should any provision contained
herein be held by any governmental agency or court of competent
jurisdiction to be void, illegal and unenforceable, the parties
shall negotiate in good faith for a substitute term or provision
which carries out the original intent of the parties.
10.10 Entire Agreement; Amendment. FLUROMETRIX and UMBC
acknowledge that they have read this entire Agreement and that this
Agreement, including the attached Exhibits constitutes the entire
understanding and contract between the parties hereto and supersedes
any and all prior or contemporaneous oral or written communications with
respect to the subject matter hereof, all of which communications are
merged herewith. It is expressly understood and agreed that (i) there
being no expectations to the contrary between the parties hereto, no
usage of trade, verbal agreement or another regular practice or method
dealing within any industry or between the parties hereto shall be used to
modify, interpret, supplement or alter in any manner the express terms of
this Agreement; and (ii) this Agreement shall not be modified, amended or
in any way altered except by an instrument in writing signed by both of the
parties hereto.
10.11 Force Majeure. If either party fails to fulfill its obligations
hereunder (other than an obligation for the payment of money), when such
failure is due to an act of God, or other circumstances beyond its
reasonable control, including but not limited to fire, flood, civil
commotion, riot, war (declared and undeclared), revolution, or
embargoes, then said failure shall be excused for the duration of such
event and for such a time thereafter as is reasonable to enable the
parties to resume performance under this Agreement.
10.12 Further Assurances. Each party shall, at any time, and from time
to time, prior to or after the EFFECTIVE DATE of this Agreement, at
reasonable request of the other party, execute and deliver to the other
such instruments and documents and shall take such actions as may be
required to more effectively carry out the terms of this Agreement.
10.13 Survival. All representations, warranties, covenants and
agreements made herein and which by their express terms or by
implication are to be performed after the execution and/or termination
hereof, or are perspective in nature, shall survive such execution
and/or termination, as the case may be. This shall include Articles
VI, VII, VIII, IX, and X.
10.14 No Third Party Beneficiaries. Nothing in this Agreement shall be
construed as giving any person, firm, corporation or other entity, other
than the parties hereto and their successors and permitted assigns, any
right, remedy or claim under or in respect to this Agreement or any
provision hereof.
10.15 Headings. Article headings are for convenient reference and not a
part of this Agreement. All Exhibits are incorporated herein by this
reference.
10.16 Counterparts. This Agreement may be executed in counterparts, each
of which shall be deemed an original and all of which when taken together
shall be deemed but one instrument.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives as of the date the
last party hereto has executed this Agreement.
UNIVERSITY OF MARYLAND, FLUOROMETRIX CORPORATION
BALTIMORE COUNTY
By: /s/ Scott Bass By: /s/ Joe Qualitz
__________________ __________________
Scott Bass, Ph.D. Joe Qualitz
Vice Provost for Research President
Date: 1/3/01 Date: 1/17/01
__________________ __________________
INVENTOR'S ACKNOWLEDGMENT
The inventor(s) of the intellectual property and/or patents licensed
by this Agreement, as employees of UMBC, acknowledge by their signature
below, that they have read, understood, and agree with the terms of this
Agreement.
By: /s/ Govind Rao Date: 1/30/01
_______________ _______________
Dr. Govind Rao
________________________________________________________________
EXHIBIT A
QUARTERLY SALES & ROYALTY REPORT
____________________________________
FOR LICENSE AGREEMENT BETWEEN FLUOROMETRIX AND UMBC DATED______
FOR PERIOD OF___________TO___________
PRODUCT UMBC UNITS TOTAL NET ROYALTY ROYALTY
NAME/ REFERENCE/ SOLD SALES/NET RATE AMOUNT
NUMBER PATENT SERVICE DUE
NUMBER REVENUES
_______ _________ ______ _________ _______ _______
_______ _________ ______ _________ _______ _______
TOTAL ROYALTIES DUE FOR THIS PERIOD $____________________
This report format is to be used to report quarterly royalty statements
to UMBC. It should be placed on FLUOROMETRIX' letterhead and accompany
any royalty payments due for the reporting period. This report shall be
submitted even if no sales are reported.
EXHIBIT B
STOCK ISSUANCE AGREEMENT
___________________________
AMENDMENT TO LICENSE AGREEMENT
This Fluorometrix Amendment having an effective date as of April 27,
2001 is made by and between Fluorometrix Corporation, a Massachusetts
corporation having an address of P. O. Box 816, Stow, Massachusetts
01775-0816 (hereinafter "FLUOROMETRIX") and University of Maryland,
Baltimore County, having an address of 1000 Hilltop Circle, Baltimore,
Maryland 21250, a constituent institution of the University System of
Maryland, which is an agency of the State of Maryland (hereinafter
"UMBC").
WHEREAS, UMBC and FLUOROMETRIX entered into a license agreement
dated January 31, 2001 (hereinafter the "Agreement"); and
WHEREAS, UMBC and FLUOROMETRIX find it in their mutual best interests
to clarify Section 3.1.3 contained in the Agreement; and
NOW THEREFORE, the parties hereto agree as follows:
1. Paragraph 3.1.3: The common stock or options for common stock
referred to in this sections will be distributed, at UMBC's request,
as follows and in full satisfaction of the obligations of this
Agreement:
-50% in the name of Govind Rao, Ph.D.
-32.5% in the name of University of Maryland, Baltimore County
-17.5% in the name of University of Maryland Biotechnology
Institute
All other terms and conditions of the Agreement shall remain in full
force and effect.
IN WITNESS WHEREOF, the parties hereto have caused this Amendment to be
executed the day and year first written above.
UNIVERSITY OF MARYLAND, FLUOROMETRIX CORPORATION
BALTIMORE COUNTY
By: /s/ Scott A. Bass By: /s/ Joseph E. Qualitz
_________________ ____________________
Scott A. Bass Joseph E. Qualitz
Vice Provost for Research President
Date: 4/19/01 Date: 4/27/01
_________________ ________________
FIRST AMENDMENT TO LICENSE AGREEMENT
This amendment having an effective date as of May 4, 2004
(hereinafter "First Amendment") is made by and between University of
Maryland, Baltimore County, having an address of 1000 Hilltop Circle,
Baltimore, Maryland 21250, a constituent institution of the University
System of Maryland, which is an agency of the State of Maryland
(hereinafter "UMBC") and Fluorometrix, a Massachusetts corporation having
an address of 1450 South Rolling Road, Baltimore Maryland 21227
(hereinafter "FLUOROMETRIX").
WHEREAS, UMBC and FLUOROMETRIX entered into a license
agreement dated January 31, 2001 (hereinafter "License Agreement"); and
WHEREAS, UMBC and FLUOROMETRIX find it in their mutual best
interests to amend the schedule of annual fees and other fees due to UMBC
under said License Agreement; and
NOW THEREFORE the parties hereto agree as follows:
1. As partial consideration for this First Amendment, replace
Paragraph 3.1.2 paten Issuance Fee, in its entirety, with the
provision as set forth below:
Concurrent with the execution of the First Amendment,
FLUOROMETRIX shall issue to UMBC an option for seven hundred
and fifty (750) shares of FLUOROMETRIX common stock, at a zero
strike price, as a patent Issuance Fee. The equity issued shall be
in accordance with an appropriate stock purchase agreement as
noted in Paragraph 3.1.1 of the License Agreement.
2. As partial consideration for this First Amendment, replace
Paragraph 3.2 Annual Fees, in its entirety, with the provision as set
forth below:
FLUOROMETRIX shall pay to UMBC annual fees in the amounts
set forth below:
DUE DATE ANNUAL FEE
______________________ _______________________
Concurrent with the Option to 400 shares of
Execution of the First Fluorometrix
Amendment common stock at a
zero strike price as
a second
anniversary annual fee
Concurrent with the Option to 500 shares of
execution of the First Fluorometrix
Amendment common stock at a
zero strike price as
a third anniversary
annual fee
Fourth Anniversary of the $10,000
EFFECTIVE DATE of the
License Agreement
Fifth Anniversary of the $25,000
EFFECTIVE DATE of the
License Agreement
Sixth Anniversary of the $50,000
EFFECTIVE DATE of the
License Agreement
Seventh and each $75,000
subsequent Anniversary of
the EFFECTIVE DATE of
the License Agreement
These annual fees shall be due within thirty (3) days of each anniversary
of the EFFECTIVE DATE of the License Agreement, beginning with the first
such anniversary. In any year where sales of LICENSED PRODUCTS or
LICENSED SERVICES exist, the annual fees shall be credited against
running royalties due in the year in which the fee is paid.
3. All other terms and conditions of the License Agreement shall
remain in full force and effect.
IN WITNESS WHEREOF, the parties hereto have caused this First
Amendment to be executed the day and year first written above.
UNIVERSITY OF MARYLAND, FLUOROMETRIX
BALTIMORE COUNTY
By: /s/ David R. Gleason By: /s/ Joseph E. Qualitz
____________________ _____________________
David R. Gleason Joseph E. Qualitz
Acting Vice Provost For Research President and CEO
Date: 6/11/04 Date: 6/17/04
_______________ ______________
________________________________________________________________
SECOND AMENDMENT TO LICENSE AGREEMENT
This amendment having an effective date as of December 31, 2005
(hereinafter "Second Amendment") is made by and between University of
Maryland, Baltimore County, having an address of 1000 Hilltop Circle,
Baltimore, Maryland 21250, a constituent institution of the University
System of Maryland, which is an agency of the State of Maryland
(hereinafter "UMBC") and Fluorometrix, a Massachusetts corporation
having an address of 24 Timber Edge Road, Stow, Massachusetts 01775-0816
(hereinafter "FLUOROMETRIX").
WHEREAS, UMBC and FLUOROMETRIX entered into a license
agreement dated January 31, 2001 (hereinafter "License Agreement"); and
WHEREAS, UMBC and FLUOROMETRIX find it in their mutual best
interests to amend the schedule of annual fees due to UMBC under said
License Agreement and to amend other terms and conditions of said License
Agreement related to sublicensing and patent prosecution; and
NOW THEREFORE for good and valuable consideration, the receipt
and legal sufficiency of which are acknowledged by both parties, the
parties hereto agree as follows:
1. As partial consideration for this Second Amendment, Fluorometrix
shall provide to UMBC five thousand (5,000) shares of Fluorometrix
common stock.
2. Add the following paragraph:
1.11 "SUBLICENSE ROYALTY" shall mean for any sublicense executed by
FLUOROMETRIX or an AFFILIATED COMPANY on or before January 31, 2006,
the running royalty received by
FLUOROMETRIX or an AFFILIATED COMPANY for SUBLICENSEE sales of
LICENSED PRODUCTS or LICENSED SERVICES and any other fees creditable
against running royalties received by FLUOROMETRIX or an AFFILIATED
COMPANY.
3. Replace the following paragraphs in their entirety, with the
provisions set forth below:
3.2 Annual Fees. FLUOROMETRIX shall pay to UMBC annual fees in the
amounts set forth below:
DUE DATE ANNUAL FEE
________________________ ____________________
Fifth Anniversary of the $25,000
EFFECTIVE DATE of the
License Agreement
Sixth Anniversary of the $35,000
EFFECTIVE DATE of the
License Agreement
Seventh and each $50,000
subsequent Anniversary of
the EFFECTIVE DATE of
the License Agreement
These annual fees shall be due within thirty (30) days of each
anniversary of the EFFECTIVE DATE of the License Agreement,
beginning with the first such anniversary. In any year where sales
of LICENSED PRODUCTS or LICENSED SERVICES exist, the
annual fees shall be credited against running royalties due in the
year in which the fee is paid.
3.3 Royalties. FLUOROMETRIX shall pay to UMBC eight percent
(8%) of NET SALES as a running royalty for each LICENSED PRODUCT
sold by FLUOROMETRIX, for the term of this Agreement. In addition,
FLUOROMETRIX shall pay to UMBC twelve percent (12%) of NET
SERVICE REVENUES as a running royalty for each LICENSED SERVICE
provided by FLUOROMETRIX, for the term of this Agreement. Such
payments shall be made quarterly. All non-US taxes related to the
sales of LICENSED PRODUCTS or LICENSED SERVICES shall be paid
by FLUOROMETRIX and shall not be deducted from any royalty or other
payments due to UMBC. Only a single royalty obligation to UMBC shall
be payable with respect to any unit of LICENSED PRODUCT or
LICENSED SERVICE that is covered by more that one License
Agreement between UMBC and FLUOROMETRIX.
In order to insure UMBC the full royalty payments contemplated
hereunder, FLUOROMETRIX agrees that in the event any LICENSED
PRODUCT or LICENSED SERVICE shall be sold to an AFFILIATED
COMPANY or SUBLICENSEE, or any person, corporation, firm or
association with which FLUOROMETRIX has any agreement,
understanding or arrangement with respect to consideration (such as,
among other things, an option to purchase stock or actual stock
ownership, or an arrangement involving division of profits or special
rebates or allowances), the royalties to be paid hereunder for any such
LICENSED PRODUCT or LICENSED SERVICE shall be based upon the
greater of: 1) the net selling price at which the purchaser of LICENSED
PRODUCTS resells such products to the end user, 2) the NET SERVICE
REVENUES received from the use of a LICENSED PRODUCT in providing a
service, 3) the fair market value of the LICENSED PRODUCT or LICENSED
SERVICE, which shall be determined based on the sales price of similar
products or services in the market, as applicable, or as may be
mutually agreed by the parties, or 4) the net selling price of
LICENSED PRODUCTS or LICENSED SERVICES paid by the purchaser.
3.4 Sublicense Consideration. For any sublicense executed
by FLUOROMETRIX or an AFFILIATED COMPANY on or before
January 31, 2006, FLUOROMETRIX shall pay to UMBC fifty
percent (50%) of all SUBLICENSE ROYALTY as a running royalty.
For any sublicense executed by FLUOROMETRIX or an
AFFILIATED COMPANY after January 31, 2006, FLUOROMETRIX
shall pay to UMBC eight (8%) of NET SALES, as a running royalty
for each LICENSED PRODUCT sold by the SUBLICENSEE and
FLUOROMETRIX shall pay to UMBC twelve percent (12%) of NET
SERVICE REVENUES, as a running royalty for each LICENSED
SERVICE provided by the SUBLICENSEE for the term of this
Agreement. All non-US taxes related to the sales of LICENSED
PRODUCTS or LICENSED SERVICES shall be paid by
FLUOROMETRIX and shall not be deducted from any royalty or
other payments due to UMBC.
In addition to the running royalty due to UMBC as set forth in this
Paragraph 3.4, FLUOROMETRIX shall pay to UMBC fifteen
percent (15%) of any consideration, other than royalty, received by
FLUOROMETRIX or an AFFILIATED COMPANY for the grant of any
sublicense under this Agreement. For the purpose of clarification,
such consideration shall include, without limitation, any
licensing fees or other cash consideration, and any premium paid
by the SUBLICENSEE over Fair Market Value for stock, or the right
to purchase stock, of the FLUOROMETRIX or an AFFILIATED
COMPANY. The term "Fair Market Value" shall mean the daily
weighted average of the price at which said stock is publicly trading
during the period twenty (20) business days prior to the effective
date of said sublicense, or if the stock is not publicly traded, the
value of such stock as determined by the most recent private
financing through a Financial Investor in the FLUOROMETRIX or
AFFILIATED COMPANY that issued the shares. The term
"Financial Investor" shall mean an entity whose sole interest in
FLUOROMETRIX or AFFILIATED COMPANY is for the purpose of
investment. In no event is FLUOROMETRIX authorized to
sublicense for consideration other than cash, such as in the cross
license, without obtaining written authorization from UMBC, which
authorization may be withheld.
4.1 Prosecution & Maintenance. UMBC, at FLUOROMETRIX' expense,
shall file, prosecute and maintain all patents and patent applications
specified under PATENT RIGHTS upon authorization of FLUOROMETRIX
and FLUOROMETRIX shall be licensed thereunder. Title to all such
patents and patent applications shall reside in UMBC. UMBC shall have
full and complete control over all patent matters related to the PATENT
RIGHTS, provided however, that UMBC will consider and incorporate
reasonable comments received from FLUOROMETRIX.
FLUOROMETRIX will provide payment authorization to UMBC at least
one (1) month before an action is due, provided that FLUOROMETRIX
has received timely notice of such action from UMBC. Failure to provide
authorization can be considered by UMBC as a FLUOROMETRIX
decision not to authorize an action. In any country where
FLUOROMETRIX elects not to have a patent application filed or to pay
expenses associated with filing, prosecution, or maintenance of a patent
application or patent, UMBC may file, prosecute, and/or maintain the
patent application or patent at its own expense and for its own exclusive
benefit and FLUOROMETRIX thereafter shall not be licensed under such
patent or patent application. FLUOROMETRIX shall have the option to
choose the patent counsel used by UMBC to prosecute and maintain all
patents and patent applications specified under PATENT RIGHTS and to
be billed directly by them, and FLUOROMETRIX shall have the right to
extend that option to its exclusive SUBLICENSEE.
4. All other terms and conditions of the License Agreement shall
remain in full force and effect.
IN WITNESS WHEREOF, the parties hereto have caused this Second
Amendment to be executed the day and year first written above.
UNIVERSITY OF MARYLAND, FLUOROMETRIX CORPORATION
BALTIMORE COUNTY
By: /s/ Scott A. Bass By: /s/ Joseph E. Qualitz
_________________ ____________________
Scott A. Bass Joseph E. Qualitz
Vice Provost for Research President and CEO
Date: 10/8/07 Date: 9/18/07
_________________ ________________
________________________________________________________________________
THIRD AMENDMENT TO LICENSE AGREEMENT
This amendment having an effective date as of May 1, 2008
(hereinafter "Third Amendment") is made by and between University of
Maryland, Baltimore County, having an address of 1000 Hilltop Circle,
Baltimore, Maryland 21250, a constituent institution of the University
System of Maryland, which is an agency of the State of Maryland (herein
"UMBC") and Fluorometrix, a Massachusetts corporation having an
address of 24 Timber Edge Road, Stow, Massachusetts 01775-0816
(hereinafter "FLUOROMETRIX").
WHEREAS, UMBC and FLUOROMETRIX entered into a license
agreement dated March 17, 2002 (hereinafter "License Agreement"); and
WHEREAS, UMBC and FLUOROMETRIX find it in their mutual best
interests to establish the future terms of payment for the fifth and
sixth annual fees and the patent issuance fee ($10,000; $25,000 and
$10,000 respectively) that are past due to UMBC under said License
Agreement using a Promissory Note, attached hereto as Exhibit A, and to
amend other terms and conditions of said License Agreement related to
sublicensing and infringement recovery; and
NOW THEREFORE for good and valuable consideration, the receipt
and legal sufficiency of which are acknowledge by both parties, the
parties hereto agree as follows:
1. Replace the following paragraphs in their entirety, with the
provisions set forth below:
3.4 Sublicense Consideration. For any sublicense executed by
FLUOROMETRIX or an AFFILIATED COMPANY on or before July 1,
2006, FLUOROMETRIX shall pay to UMBC sixty percent (60%) of all
SUBLICENSE ROYALTY as a running royalty. For any
sublicense executed by FLUOROMETRIX or an AFFILIATED COMPANY
after July 1, 2006, FLUOROMETRIX shall pay to UMBC eight
(8%) of NET SALES, as a running royalty for each LICENSED
PRODUCT sold by the SUBLICENSEE and FLUOROMETRIX shall pay
to UMBC twelve percent (12%) of NET SERVICE REVENUES, as a
running royalty for each LICENSED SERVICE provided by the
SUBLICENSEE for the term of this Agreement. All non-US
taxes related to the sales of LICENSED PRODUCTS or LICENSED
SERVICES shall be paid by FLUOROMETRIX and shall not be
deducted from any royalty or other payments due to UMBC.
In addition to the running royalty due to UMBC as set forth in this
Paragraph 3.4, FLUOROMETRIX shall pay to UMBC fifteen percent (15%)
of any consideration, other than royalty, received by FLUOROMETRIX or
an AFFILIATED COMPANY for the grant of any sublicense under this
Agreement. For the purpose of clarification, such consideration shall
include, without limitation, any licensing fees or other cash
consideration, and any premium paid by the SUBLICENSEE over "Fair
Market Value" for stock, or the right to purchase stock, of the
FLUOROMETRIX or an AFFILIATED COMPANY. The term "Fair Market Value"
shall mean the daily weighted average of the price at which said
stock is publicly trading during the period twenty (20) business
days prior to the effective date of said sublicense, or if the
stock is not publicly traded, the value of such stock as determined
by the most recent private financing through a Financial Investor
in the FLUOROMETRIX or AFFILIATED COMPANY that issued the shares.
The term "Financial Investor" shall mean an entity whose sole
interest in FLUOROMETRIX or AFFILIATED COMPANY is for the purpose
of investment. In no event is FLUOROMETRIX authorized to sublicense
for consideration other than cash, such as in the cross
license, without obtaining written authorization from UMBC, which
authorization may be withheld.
4.4 Recovery. Any recovery by FLUOROMETRIX under Paragraph 4.3
shall be deemed to reflect loss of commercial sales, and
FLUOROMETRIX shall pay to UMBC sixty percent (60%) of the recovery
net of all reasonable costs and expenses associated with each suit or
settlement. If the cost and expenses exceed the recovery, then one-
half (1/2) of the excess shall be credited against royalties payable
by FLUOROMETRIX to UMBC hereunder in connection with sale sin the
country of such legal proceedings, provided, however, that any such
credit under this Paragraph shall not exceed fifty percent (50%) of
the royalties otherwise payable to UMBC with regard to sales in the
country of such action in any one calendar year, with any excess
credit being carried forward to future calendar years.
2. All other terms and conditions of the License Agreement shall
remain in full force and effect.
IN WITNESS WHEREOF, the parties hereto have caused this Third
Amendment to be executed the day and year first written above.
UNIVERSITY OF MARYLAND, FLUOROMETRIX CORPORATION
BALTIMORE COUNTY
By: /s/ Scott A. Bass By: /s/ Joseph E. Qualitz
_________________ ____________________
Scott A. Bass Joseph E. Qualitz
Vice Provost for Research President and CEO
Date: 4/28/08 Date: 4/15/08
_________________ ________________
