PROLUME LTD/NANOLIGHT TECHNOLOGIES:
GREEN FLUORESCENT PROTEIN (GFP) MATERIALS TRANSFER, EVALUATION AND OPTION AGREEMENT
This Materials Transfer, Evaluation and Option Agreement (the "Agreement")
is made as of __________, 2002 (the "Effective Date") between Prolume
Ltd., a Delaware corporation, ("Prolume"), and [Name of Recipient
here], a [state and type of entity], having its address at ________________________________
_________________________________ (hereinafter "Recipient"). Certain
capitalized terms used in this Agreement are defined in Article VIII hereof.
BACKGROUND
WHEREAS, Prolume has certain patent rights and related technology
relating to novel genes (collectively, the "Rights"). Recipient believes
that the Rights may have commercial application in the field described on Appendix
A (the "Field").
WHEREAS, Recipient wishes to evaluate the Rights (and to obtain certain materials
from Prolume in order to conduct such evaluation), in order to determine whether
it desires to enter into a non-exclusive license agreement with Prolume regarding
the use, sale and manufacture of certain products within the Field.
WHEREAS, Recipient desires to obtain from Prolume an option to enter into such
a license agreement in the event that it is satisfied with the results of its
evaluation.
WHEREAS, Prolume is willing (i) to provide Recipient with a limited license
under the Rights to conduct such evaluation, (ii) to provide certain materials
to Recipient in connection with such evaluation, and (iii) to provide Recipient
with an option to enter into a non-exclusive, nontransferable license agreement,
in each case upon the terms and conditions set forth herein.
Therefore, the parties agree as follows, intending to be legally bound:
AGREEMENT
ARTICLE I
MATERIALS TRANSFER
1.1 Transfer of Materials. Within five (5) days following the Effective
Date, Prolume shall transfer to Recipient the materials listed on Appendix B
attached hereto and made a part hereof (the "Materials").
1.2 Evaluation License. Prolume hereby grants to Recipient a limited, nontransferable,
non-exclusive license (the "Evaluation License") to use the materials
only for the purpose of testing and evaluating the Materials for use in the
Field during the Evaluation Period. The Evaluation License will terminate upon
the expiration or termination of this Agreement.
1.3 Evaluation; Limitation on Use. During the 95-day period following
the Effective Date (the "Evaluation Period"), Recipient shall use
commercially reasonable efforts to evaluate the Materials to determine whether
Recipient desires to enter into a License Agreement (the "Evaluation").
Prolume agrees to provide reasonable and prompt assistance to Recipient in conducting
the Evaluation. Recipient agrees that it shall use the Materials only for purposes
of the Evaluation and shall not use the Materials for any other purpose whatsoever
without Prolume's prior written consent.
1.4 Ownership and Control of Materials. Title to all Materials, including,
but not limited to, materials containing any portion of the Materials or materials
derived from the Materials, shall remain in Prolume. Notwithstanding the foregoing,
during the Term (as defined below), Recipient shall be responsible for the care
and control of the Materials and shall not distribute, transfer or otherwise
provide access to, the Materials, or any component, or modification thereof
or the results of its Evaluation, to any third party without prior written approval
of Prolume.
1.5 Care in Use of Materials. Recipient acknowledges that the Materials
are experimental in nature and may have unknown characteristics. Recipient therefore
agrees to use prudence and reasonable care in the use, handling, storage, transportation,
and disposition and containment of the Materials, and agrees to indemnify Prolume
for any damages, costs or losses resulting from Recipient's failure to do so.
The materials are being provided "AS IS" and Recipient assumes the
risk of handling the Materials.
ARTICLE II
LICENSE OPTION
2.1 License Option; License Agreement. Prolume hereby grants to Recipient
the option (the "License Option"), which shall be exercisable only
in the manner set forth in Section 2.2, to negotiate and enter into a license
agreement with Prolume containing the terms and conditions set forth on Appendix
C hereto, together with such other reasonable and customary terms as are mutually
agreed to by the parties (the "License Agreement").
2.2 Exercise of License Option. Recipient may exercise the License Option
at any time prior to the expiration of the Evaluation Period by providing written
notice thereof to Prolume (the "Go Notice") along with a $10,000 deposit
to be credited towards the first annual minimum royalty payment. If Recipient
fails to timely deliver the Go Notice, the License Option shall expire. In the
event that Recipient timely delivers the Go Notice, the parties shall promptly
begin negotiating the final form of the License Agreement with the goal of executing
such License Agreement within 15 days of Prolume's receipt of the Go Notice
(the "Target Date"). It is expressly understood and agreed that no
license shall be granted, or deemed to have been granted, to Recipient unless
and until the mutual execution of the License Agreement.
ARTICLE III
EVALUATION FEE
3.1 Evaluation Fee. In consideration of the Evaluation License, the License
Option and the other rights granted hereunder, Recipient agrees to pay to Prolume
a non-refundable, one-time fee of ____________ thousand dollars ($________)
per GFP gene (the "Evaluation Fee") within ten (10) days of the Effective
Date. This evaluation fee is fully creditable toward the upfront license fee.
ARTICLE IV
CONFIDENTIAL INFORMATION
4.1 Definition of "Confidential Information."
(a) Subject to Section
4.1(b), the term "Confidential Information" means any information
disclosed or provided by either Prolume or Recipient (each, a "Discloser")
to the other party (the "Receiving Party") in connection with this
Agreement, including, without limitation, any formula, pattern, compilation,
program, method, technique, process, biological material, gene sequence, data
test, model, result or analysis that: (1) derives independent economic value,
actual or potential, from not being generally known to the public or to the
other persons who can obtain economic value from its disclosure or use; and
(2) is the subject of efforts that are reasonable under the circumstances to
maintain its secrecy. Without limiting the generality of the foregoing, the
Materials, all Related Technology, and the terms of this Agreement and of the
License Agreement shall be deemed to constitute "Confidential Information"
of Prolume.
(b) Notwithstanding Section 4.1(a), "Confidential Information" shall
not include information that: (1) is now or subsequently becomes generally available
to the public through no wrongful act or omission of the Receiving Party; (2)
Receiving Party can demonstrate to have had rightfully in its possession prior
to disclosure to Receiving Party by Discloser; (3) is independently developed
by Receiving Party without use, directly or indirectly, of any Confidential
Information; (4) Receiving Party rightfully obtains from a third party who has
the right to transfer or disclose it; or (5) becomes publicly available through
no wrongful act or omission of the Receiving Party after it is first disclosed
by the Discloser.
4.2 Non-use; Nondisclosure. Neither party shall reproduce, use, distribute,
disclose or otherwise disseminate any Confidential Information of the other
party without the written consent of such other party and shall not take any
action causing, or fail to take any reasonable action necessary to prevent,
any such Confidential Information to lose its character as Confidential Information.
4.3 Ownership. All Confidential Information disclosed by one party shall
remain the property of such party.
4.4 Access to Confidential Information. Each party agrees that access
to Confidential Information of the other party shall be limited to those employees
or other authorized representatives of the first party who: (1) need access
to such Confidential Information in order to perform the Evaluation or otherwise
to perform its obligations under this Agreement, and (2) have signed agreements
with such first party obligating them to maintain the confidentiality of information
disclosed to them and designated or defined as confidential on terms no less
onerous than those provided for herein. Each party further agrees to inform
its employees or authorized representatives of the confidential nature of the
other party's Confidential Information and agrees to take all reasonably necessary
steps to ensure that the terms of this Agreement are not violated by them.
4.5 Equitable Relief. Both parties agree that monetary damages would
be inadequate to remedy any breach of the obligations set forth in this Article
IV, and that, in the event of any unauthorized disclosure or use of the Confidential
Information of either party, such party will have the right to seek injunctive
relief, without posting a bond, in addition to any other rights and remedies
it may have.
ARTICLE V
REPRESENTATIONS AND WARRANTIES
5.1 By Prolume. Prolume hereby represents and warrants to Recipient
that (i) it has the right to enter into this Agreement and grant the rights
granted herein; (ii) it has not granted and will not grant during the Term hereof
rights in or to any Patent Rights and Related Technology that would prevent
Prolume from entering into the License Agreement; (iii) to its knowledge, there
are no claims of third parties that would call into question the rights of Prolume
to grant to Recipient the rights contemplated hereunder; and (iv) to its knowledge,
practice of the Patent Rights for purposes of the Evaluation will not infringe
intellectual property rights of third parties.
5.2 By Recipient. Recipient hereby represents and warrants to Prolume
that (i) it has the right to enter into this Agreement, and (ii) to its knowledge,
there are no claims of third parties that would call into question Recipient's
ability to perform its obligations under this Agreement.
5.3 Disclaimer of Implied Warranties. EXCEPT AS OTHERWISE SPECIFICALLY
SET FORTH IN THIS ARTICLE V, NEITHER PARTY MAKES ANY WARRANTIES OR CONDITIONS
(EXPRESS, IMPLIED, STATUTORY OR OTHERWISE) WITH RESPECT TO THE SUBJECT MATTER
HEREOF, AND PROLUME SPECIFICALLY DISCLAIMS ANY AND ALL IMPLIED WARRANTIES OR
CONDITIONS OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE WITH RESPECT
TO THE MATERIALS OR OTHERWISE HEREUNDER.
ARTICLE VI
INTELLECTUAL PROPERTY RIGHTS
6.1 Intellectual Property Rights. Prolume shall have sole and exclusive
ownership of, and all intellectual property rights in or related to, the Materials
and Related Technology, and no such rights, whether in the nature of patent,
trademark, copyright or trade secret rights, are being granted to Recipient
hereunder other than the Research License. Recipient agrees that Prolume retains
all such rights and that Recipient has no proprietary rights or interest in
the Materials or Related Technology except as specified in the Research License.
6.2 Derivatives/Improvements. It is not anticipated that Recipient will
develop any new intellectual property or invention of a product, device, process
or method, whether patentable or unpatentable, based on the Materials, Patent
Rights, Related Technology and/or any of Prolume's Confidential Information
during the Term hereof; provided, that in the event that it does develop any
such intellectual property or invention, Recipient shall promptly notify Prolume
of any such development and all rights to the intellectual property or invention
resulting from such development shall become the property of Prolume. Upon the
request of Prolume, Recipient shall promptly execute all such documents as are
necessary to effectuate the transfer of the foregoing to Prolume.
ARTICLE VII
TERM AND TERMINATION
7.1 Term. The term of this Agreement (the "Term") will commence
on the Effective Date and, unless terminated earlier pursuant to Section 7.2,
will continue in full force and effect until the expiration of the Evaluation
Period or, in the event that Recipient timely delivers the "Go Notice,"
until the Target Date.
7.2 Early Termination.
(a) Prolume may terminate this Agreement at any time upon written notice to
Recipient in the event that Recipient materially breaches any provision hereof.
(b) Recipient may terminate this Agreement at any time upon written notice to
Prolume for any reason or no reason.
7.3 Effect of Termination. Upon the termination or expiration of this
Agreement:
(a) Each party shall promptly deliver to the other party all Confidential Information
of such other party and all embodiments thereof then in its custody, control
or possession and shall deliver within ten (10) days after such expiration or
termination or request a written statement to the other party certifying to
such action; and
(b) Recipient shall discontinue its use of the Materials and shall promptly
return any unused Materials to Prolume, as well as any products made from the
Materials accompanied by a description of the method of such product's synthesis
or manufacture.
7.4 Survival. Articles IV (Confidentiality), VI (Intellectual Property),
VII (Term and Termination), and IX (General Provisions) shall survive the expiration
or termination of this Agreement and remain in full force and effect.
ARTICLE VIII
DEFINITIONS
8.1 Definitions. As used in this Agreement, the following capitalized
terms have the following meanings:
"Affiliate" means any corporation or other entity that directly, or
indirectly through one or more intermediaries, controls, is controlled by, or
is under common control with the designated party but only for so long as such
relationship exists. For purposes of this definition, control means ownership
of at least fifty percent (50%) of the shares of stock entitled to vote for
directors in the case of a corporation, and of at least fifty percent (50%)
of the interests in profits of a business entity other than a corporation.
"Green Fluorescent Protein (GFP) Gene" means a polynucleotide encoding
a Renilla reniformis GFP, or Renilla Mullerei GFP, or Ptilosarcus GFP: (Rr-GFP,
Rm-GFP, Pt-GFP) that is owned or controlled by Prolume as of the Effective Date.
"Licensed Product" means any product the manufacture, use or sale
of which would, but for the license granted under the License Agreement, infringe
a Valid Claim in the country where it is manufactured, used or sold, or any
product containing or encompassing Related Technology or other Confidential
Information of Prolume, which is not the subject of any patent application or
patent, or any issued patents covering such subject matter which have not been
abandoned or declared invalid in a non-appealable order.
"Patent Rights" means the rights owned or licensed by Prolume involving
the patent applications and patents and any and all non-U.S. counterparts thereof
listed on Appendix D attached hereto and made a part hereof, claiming, disclosing
or relating to: (a) Renilla reniformis GFP (sea pansy) (b) Renilla mullerei
GFP; sea pansy (c) Ptilosarcus sp. GFP, sea pen, and any continuations, divisions,
continuations-in-part, confirmations, substitutions, registrations, revalidations,
additions, extensions, re-examination certificates, supplementary protection
certificates and reissues thereof.
"Related Technology" means any and all know-how and trade secrets
which Prolume owns or controls as of the Effective Date, which are necessary
or useful for the commercialization of Licensed Products in the Field.
"Valid Claim" means any claim contained in any patent application
or in any issued and unexpired patent included within the Patent Rights which
has not been abandoned or held unenforceable or invalid by a court of last resort
and which has become unappealable, or other governmental agency of competent
jurisdiction in a non-appealable order, and which has not been disclaimed or
admitted to be invalid or unenforceable; provided that, in the case of a patent
application that has not issued, not more than six (6) years have elapsed from
the earliest priority filing date to which the claim is entitled.
ARTICLE IX
GENERAL PROVISIONS
9.1 Independent Contractors. The relationship of Prolume and Recipient
established by this Agreement is that of independent contractors. Nothing in
this Agreement will be construed to create any other relationship between Prolume
and Recipient. Neither party will have any right, power or authority to assume,
create or incur any expense, liability or obligation, express or implied, on
behalf of the other.
9.2 Assignment. This Agreement will not be assignable by either party
to any third party hereto without the written consent of the other party hereto;
provided that Prolume may assign this Agreement without the consent of Recipient
to any of Prolume's subsidiaries or Affiliates.
9.3 Notices. Any notice or other communication required by this Agreement
will be made in writing and given by prepaid, first class, certified mail, return
receipt requested, and will be deemed to have been served on the date received
by the addressee at the following address or such other address as may from
time to time be designated to the other party in writing:
If to Prolume: Prolume Ltd. 163 W. White Mountain Blvd., Suite DPinetop, AZ,
85935, USA.Attn: Bruce Bryan, M.D.
If to Recipient: [Name of Recipient Here]
_________________
_________________
_________________
_________________
9.4 Compliance with Law; Export Controls. Both parties will comply with
all applicable federal, state and local laws and regulations in connection with
its activities pursuant to this Agreement. Without limiting the generality of
the foregoing, the parties acknowledge that certain Confidential Information
or other information disclosed in connection with the Materials may be considered
technical data that is subject to compliance with the export control laws and
regulations of the United States, Israel or other countries and hereby agree
to comply with such laws.
9.5 Governing Law. This Agreement will be governed by, and construed
and interpreted in accordance with, the laws of the Commonwealth of Pennsylvania,
without reference to its conflicts of law principles.
9.6 No Waiver. A waiver, express or implied, by either Prolume or Recipient
of any right under this Agreement or of any failure to perform or breach hereof
by the other party hereto will not constitute or be deemed to be a waiver of
any other right hereunder or of any other failure to perform or breach hereof
by such other party, whether of a similar or dissimilar nature thereto.
9.7 Severability. If any provision of this Agreement is found by a court
to be void, invalid or unenforceable, the same will be reformed to comply with
applicable law or stricken if not so conformable, so as not to affect the validity
or enforceability of the remainder of this Agreement.
9.8 Entire Agreement. This Agreement (including the Appendices hereto)
constitutes the entire understanding and agreement between the parties with
respect to the subject matter hereof and supersedes any and all prior negotiations,
representations, agreements, and understandings, written or oral, that the parties
may have reached with respect to the subject matter hereof. No agreements altering
or supplementing the terms hereof may be made except by means of a written document
signed by the duly authorized representatives of each of the parties hereto.
9.9 Counterparts. This Agreement may be executed in counterparts, each
of which will be deemed an original, but both of which together will constitute
one and the same instrument. Facsimile signatures of the parties shall have
the same effect as original signatures.
9.10 Limitation of Liability. IN NO EVENT SHALL EITHER PARTY BE LIABLE FOR ANY
INDIRECT, INCIDENTAL, SPECIAL OR CONSEQUENTIAL DAMAGES ARISING OUT OF OR IN
CONNECTION WITH THIS AGREEMENT.
IN WITNESS WHEREOF, the parties hereto have caused their duly authorized representatives
to execute this Agreement.
PROLUME LTD.
By:
Name:
Title:
RECIPIENT
By:
Name:
Title:
APPENDIX A
The Field of Use
The life science research market for non-commercial research uses only (e.g.,
the sale of vectors containing the Green Fluorescent Protein Genes to universities
for non-commercial life-science research purposes). Without limiting the foregoing,
the "Field" does not include the research or development of commercial
products (e.g., high throughput screening) or the research market for such products.
APPENDIX B
The Materials
1. Prokaryotic and eukaryotic plasmids (50- 100 ug each) containing a cDNA or gene encoding a Renilla Reniformis Green Fluorescent Protein (Atlantic Sea Pansy) GFP in pUC18 plasmid with vector maps and sequence information.
2. Prokaryotic and eukaryotic plasmids (50- 100 ug each) containing a cDNA
or gene encoding a Renilla Mullerei Green Fluorescent Protein (Gulf of
Mexico Sea Pansy) GFP in pUC19 plasmid with vector maps and sequence information.
Human codon optimized Renilla Mullerei Green Fluorescent Protein in pGEX-4T
plasmid with vector maps and sequence information.
3. Prokaryotic and eukaryotic plasmids (50- 100 ug each) containing a cDNA or
gene encoding Ptilosarcus (Sea Pen) GFP in pUC18 plasmid with vector
maps and sequence information. Human codon optimized Ptilosarcus Green Fluorescent
Protein in pGEX-4T plasmid with vector maps and sequence information.
APPENDIX C
License Agreement Term Sheet
Parties: Recipient and Prolume Ltd.("Prolume")
Licenses: Prolume would grant to Recipient (i) a non-exclusive worldwide
license with respect to the {the Green Fluorescent Protein of choice }including
rights and licenses under the Patent Rights and to the Related Technology, without
the right to grant sublicenses, to make, have made, use, sell, offer to sell
and import Licensed Products, practice any method, process or procedure and
otherwise exploit the Licensed Products, within the Field of Use.
Upfront License Fees and Annual Royalties: Upfront license fee of $____________(in
addition to the paid Material Transfer and Evaluation Fee) due upon execution.At
the initiation of this license Recipient will pay to Prolume the Minimum Annual
Payment of __________thousand dollars ($__0,000.00) per Gene on sales of a non-exclusively
Licensed Product, fully creditable against earned royalties, to be paid in advance.
Thereafter the first annual minimum royalty of ___ percent (_0%) of Net Sales
by Recipient of Licensed Products.
"Net Sales" shall mean the gross amount received by Recipient from
the sale of Licensed Products, less (i) credits for returned products; (ii)
freight and insurance; and (iii) governmental charges and taxes imposed with
respect to such sales.
Grant Back: Recipient will grant Prolume an exclusive worldwide license
to use, manufacture and sell, with the right to sublicense, intellectual property
related to improvements, new inventions and discoveries based on the licensed
technology within the life sciences field for a royalty of 3% on Net Sales by
Prolume, with no minimum annual fee or payment; and Recipient will grant Prolume
an exclusive worldwide royalty-free license to use, manufacture and sell, with
the right to sublicense, intellectual property related to improvements, new
inventions and discoveries based on the licensed technology within fields other
than the life sciences field.
Terms: The initial term of the License Agreement will commence on the effective
date of the License Agreement and will continue in full force and effect until
the earliest to occur of: (i) the expiration, revocation or invalidation of
the last patent within the Patent Rights; or (ii) the abandonment of the last
application within the Patent Rights.
Either party may terminate the License Agreement on 90 days prior written notice
if the other party materially breaches the License Agreement and fails to cure,
after written notice thereof, within such 90-day period; provided that if the
party alleged to be in breach disputes the same in good faith within such 90-day
period, the right to terminate will be stayed until it has been determined by
the applicable dispute resolution mechanism that such party is in material breach
and thereafter fails to promptly cure. Prolume may terminate the license agreement
upon 3 months notice prior to the end of any paid-up term and is not obligated
to continue the license. Recipient shall then wind down, stop use, and cease
all sales within the 90-day period.
In the event of the insolvency or bankruptcy of either party, the other party
may, at its option, terminate the License Agreement or elect to keep the License
Agreement in place, including with respect to intellectual property created
after the filing of a bankruptcy petition.
Labeling Requirement: Recipient agrees that appropriate package license
statements will be incorporated in the distribution of Licensed Products to
indicate that such Licensed Product contains certain material under license
and that the recipient's use of the Licensed Product is restricted to non-commercial
research uses only. The label will indicate that commercial use and/or use to
further research and development of a commercial product will require a commercial
license from Prolume. Recipient agrees to use its reasonable efforts to appropriately
label all advertising, promotional, and packaging materials, and products with
the U.S. patent number(s) of Licensed Product(s) in accord with 35 U.S.C. §287,
or by providing the words "patent pending," whichever is applicable
at the time, and with appropriate copyright notices and/or marks in the style,
manner, design and form as may be specified by Prolume.
APPENDIX D
Patent Rights
U.S. Patent No. 6,232,107 issued May 15, 2001;
"Luciferases, Florescent Proteins, Nucleic Acids Encoding the Luciferases
and Fluorescent Proteins and the Use Thereof in Diagnostics, High Throughput
Screening and Novelty Items."
US Patent Application 60/189,691, filed March 15, 2001
Renilla reniformis fluorescent proteins, nucleic acids encoding the fluorescent proteins, and the use thereof in diagnostics, high throughput screening and novelty items.
PCT Patent Application filed March 15, 2001
Application PCT/US01/008277
Renilla reniformis fluorescent proteins, nucleic acids encoding the fluorescent proteins, and the use thereof in diagnostics, high throughput screening and novelty items.