Co-Exclusive License Agreement - Harvard College and Nanosys Inc.
CO-EXCLUSIVE LICENSE AGREEMENT (CASE [*** Redacted])
Between
President and Fellows of Harvard College
And
NanoSys, Inc.
Effective as of October 4, 2001 ("Effective Date")
Re: Harvard Case [*** Redacted]
In consideration of the mutual promises and covenants set forth below,
the parties hereto agree as follows:
ARTICLE I
DEFINITIONS
As used in this Agreement, the following terms shall have the following
meanings:
1.1 ACADEMIC RESEARCH PURPOSES: use of PATENT RIGHTS solely for academic
non-commercial research or other not-for-profit scholarly purposes, which
use is undertaken at a non-profit or governmental institution. ACADEMIC
RESEARCH PURPOSES does not include selling products covered by PATENT
RIGHTS or using PATENT RIGHTS in researching, developing, producing or
manufacturing products for sale, or performance of services for a fee or
other financial consideration. It is understood that using the PATENT
RIGHTS to conduct normal research activities at non-profit or
governmental institution is within the defined term of ACADEMIC RESEARCH
PURPOSES.
1.2 AFFILIATE: any entity which controls, is controlled by, or is under
common control with a party. An entity shall be regarded as in control of
another entity for purposes of this definition if it owns or controls at
least fifty percent (50%) of the shares entitled to vote in the election
of directors (or in the case of an entity that is not a corporation, for
the election of the corresponding managing authority). Unless otherwise
specified, the term LICENSEE includes AFFILIATES.
1.3 FIELD: All fields of use.
1.4 HARVARD: President and Fellows of Harvard College, a nonprofit
Massachusetts educational corporation having offices at the Office for
Technology and Trademark
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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Licensing, Holyoke Center, Suite 727, 1350 Massachusetts Avenue, Cambridge,
Massachusetts 02138.
1.5 LICENSED PROCESSES: methods, processes or procedures covered by at least
one VALID CLAIM included within the PATENT RIGHTS.
1.6 LICENSED PRODUCTS: products covered by at least one VALID CLAIM included
within the PATENT RIGHTS or products made in accordance with LICENSED
PROCESSES.
1.7 LICENSEE: Nanosys, Inc., a corporation organized under the laws of Delaware
having its principal offices at CW Group East, 1041 Third Avenue, New York,
New York 10021.
1.8 NET SALES: [*** Redacted]
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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[*** Redacted]
1.9 PATENT RIGHTS: PATENT RIGHTS shall include (i) the applications and patents
as listed in Appendix A of this Agreement, (ii) any foreign counterparts to
such patents and patent applications, (iii) the inventions described and
claimed in the foregoing; (iv) any divisions, continuations, substitutions
of the foregoing, and (v) specific claims of any continuations-in-part of
the foregoing to the extent the specific claims are directed to subject
matter described in the foregoing in a manner sufficient to support such
specific claims under 35 U.S.C. and to the extent Licensable by HARVARD,
(vi) all patents issuing on any of the foregoing, and (vii) registrations,
renewals, reissues, reexaminations, extensions or patents of addition of
any kind with respect to any of such patents. For purposes of this
Agreement "Licensable" shall mean those claims of continuations-in- part
filed after the Effective Date for which HARVARD has sole ownership (or has
been granted the sole right to license by a co-owner) and where there are
no obligations to grant licenses to a third party as the result of research
support provided to one or more of the inventors.
1.10 SERVICE INCOME: [*** Redacted]
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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[*** Redacted]
1.11 SUBLICENSE INCOME: [*** Redacted]
1.12 TERRITORY: Worldwide.
1.13 VALID CLAIM: either (i) a claim of an issued patent that has not
expired or been held unenforceable or invalid by an agency or a court
of competent jurisdiction, and which has not been admitted to be
invalid or unenforceable through reissue, disclaimer or otherwise;
provided, however, that if the holding of such court or agency is
later reversed by a court or agency with overriding authority, the
claim shall be reinstated as a Valid Claim with respect to Net Sales
made after the date of such reversal, or (ii) a claim of a pending
patent application that has not been abandoned or finally rejected
without the possibility of appeal or re-filing and that has been
pending for less than five (5) years from its priority date, and is
being actively prosecuted in good faith.
1.14 The terms "Public Law 96-517" and "Public Law 98-620" include all
amendments to those statutes.
1.15 The terms "sold" and "sell" include, without limitation, leases and
other dispositions and similar transactions.
*** Confidential treatment requested pursuant to a request for
confidential treatment filed with the Securities and Exchange
Commission. Omitted portions have been filed separately with the
Commission.
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1.16 RELATED LICENSE AGREEMENTS: Other patent license agreements between
LICENSEE and HARVARD licensing patent rights known internally at
HARVARD as Case [*** Redacted] to LICENSEE.
1.17 R&D SPENDING, MINIMUM INVESTMENT: shall have the meanings as set forth
in Section 4.5.
1.18 DEVELOPMENT PAYMENTS: DEVELOPMENT PAYMENTS shall mean (a) any
payments, in consideration for, or to support, research and/or
development efforts by LICENSEE and (b) any reimbursement of expenses
including without limitation patent expenses.
ARTICLE II
RECITALS
2.1 HARVARD is owner (or HARVARD will be owner) by assignment from
[*** Redacted] of their entire right, title and interest in the PCT
application [*** Redacted] (claiming priority to US Provisional
Application [*** Redacted], in the foreign and US patent applications
corresponding thereto, and in the inventions described and claimed
therein.
2.2 HARVARD has the authority to issue licenses under PATENT RIGHTS.
2.3 HARVARD is committed to the policy that ideas or creative works
produced at HARVARD should be used for the greatest possible public
benefit, and believes that every reasonable incentive should be
provided for the prompt introduction of such ideas into public use,
all in a manner consistent with the public interest.
2.4 LICENSEE intends to use commercially reasonable efforts to develop the
invention(s), and to bring to market at least one product falling
within the definition of LICENSED PRODUCT or otherwise embodying the
subject matter described or claimed in the patents rights licensed
under such agreements.
2.5 LICENSEE is desirous of obtaining a co-exclusive license in the
TERRITORY in order to practice the above-referenced invention covered
by PATENT RIGHTS in the United States and in certain foreign
countries, and to manufacture, use and sell in the commercial market
the products made in accordance therewith, and HARVARD is desirous of
granting such a license to LICENSEE in accordance with the terms of
this Agreement.
ARTICLE III
GRANT OF RIGHTS
3.1 HARVARD hereby grants to LICENSEE and LICENSEE accepts, subject to the
terms and conditions hereof, a co-exclusive license (with Nantero,
Inc. and except as set forth in Sections 3.2(a) and 3.2(b)) under
PATENT RIGHTS in the TERRITORY and in the FIELD (i) to make and have
made, to use and have used, to sell and have sold, to offer for
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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sale, import, export, or otherwise distribute the LICENSED PRODUCTS,
(ii) to practice the LICENSED PROCESSES, and (iii) to otherwise fully
exploit the PATENT RIGHTS, and (iv) to have the foregoing performed on
behalf of LICENSEE by a third party, in each case for the life of the
PATENT RIGHTS. The foregoing license under PATENT RIGHTS shall include
the right to grant sublicenses only in accordance with Section
3.2(b)(iii). LICENSEE shall promptly provide copies of any sublicenses
of PATENT RIGHTS to HARVARD for its review. Unless HARVARD has
rendered the license under PATENT RIGHTS non-exclusive under Section
4.3(d), HARVARD agrees that it will not grant licenses under PATENT
RIGHTS to others, nor make, use, sell, offer for sale, import or
otherwise exploit PATENT RIGHTS itself except to Nantero Inc. and as
required by HARVARD's obligations in Section 3.2(a) or as permitted in
Section 3.2(b)
3.2 The granting and exercise of this license is subject to the following
conditions:
(a) HARVARD's "Statement of Policy in Regard to Inventions, Patents
and Copyrights," dated August 10, 1998, Public Law 96-517 and
Public Law 98-620, and HARVARD's obligations under prior or
current agreements with other sponsors of research and, with
regard to continuations-in-part contained in the PATENT RIGHTS,
any future agreements with other sponsors of research related to
such continuations-in-part. Any right granted in this Agreement
greater than that permitted under Public Law 96-517, or Public Law
98-620, shall be subject to modification to the extent required to
conform to the provisions of those statutes.
(b) This co-exclusive license shall mean that LICENSEE shall have the
exclusive rights to PATENT RIGHTS except as provided in 3.2(a) and
as provided below.
(i) HARVARD reserves the right to make and use, and grant to
other non-profit or governmental institutions non-exclusive
licenses to make and use, in each case solely for ACADEMIC
RESEARCH PURPOSES the subject matter described and claimed in
PATENT RIGHTS. HARVARD shall promptly notify LICENSEE of any
rights granted to any third party (other than the U.S.
government) under Sections 3.2(a) and (b).
(ii) LICENSEE expressly recognizes that Nantero, Inc. ("NANTERO")
currently has the right to obtain a co-exclusive license
under PATENT RIGHTS. In the event that NANTERO's rights
should expire or terminate for any reason, HARVARD shall
immediately notify LICENSEE, and LICENSEE shall have the
right to convert its license to PATENT RIGHTS hereunder to an
exclusive (subject to Sections 3.2(a) and 3.2(b)(i)) and
fully sublicensable license upon the payment of [***
Redacted] to HARVARD.
(iii) Neither LICENSEE nor NANTERO may grant sublicenses under
PATENT RIGHTS unless (x) such entity can demonstrate to
HARVARD that it has added significant value to the PATENT
RIGHTS to be sublicensed, and that its sublicense of PATENT
RIGHTS accompanies a substantial and essentially simultaneous
license of such added value in the form of LICENSEE-owned
intellectual property, or (y) such entity is granting an
authorized sublicense under other patent rights licensed
exclusively from HARVARD which are
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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dominated by PATENT RIGHTS, and its sublicense of PATENT RIGHTS is
therefore necessary to permit the sublicensee to practice such other
HARVARD patent rights, or (z) such entity obtains the approval of
HARVARD and the other co-exclusive licensee of PATENT RIGHTS.
Notwithstanding the foregoing, the restrictions on sublicensing set
forth in this Section 3.2(b)(iii) shall not apply to LICENSEE, and
LICENSEE shall have the full unrestricted right to grant sublicenses,
in the event LICENSEE's license to PATENT RIGHTS is converted to an
exclusive license under Section 3.2(b)(ii).
(c) LICENSEE shall use commercially reasonable efforts to effect introduction
into the commercial market at least [*** Redacted] falling within the
definition of LICENSED PRODUCT or otherwise embodying the subject matter
described or claimed in PATENT RIGHTS, consistent with sound and reasonable
business practice and judgment; thereafter, until the expiration of this
Agreement, LICENSEE shall use commercially reasonable efforts to endeavor
to keep any [*** Redacted] reasonably available to the public so long as it
shall be a sound and reasonable commercial practice to do so.
(d) At any time after [*** Redacted] years from the effective date of this
Agreement, HARVARD may render the license non-exclusive if LICENSEE has
not:
(i) used commercially reasonable efforts to put the licensed subject
matter into commercial use in one or more of the countries hereby
licensed, directly or through a sublicense; nor
(ii) used commercially reasonable efforts to keep products falling within
the definition of LICENSED PRODUCT or otherwise embodying the
subject matter described or claimed in PATENT RIGHTS reasonably
available to the public so long as it shall be a sound and
reasonable commercial practice to do so; nor
(iii) engaged in research, development, manufacturing, marketing or
sublicensing activity that is commercially reasonably appropriate to
achieving Section 3.2(d)(i) or 3.2(d)(ii).
LICENSEE shall be deemed to have satisfied Section 3.2(d)(iii), and HARVARD
shall not render the license of PATENT RIGHTS granted hereunder
non-exclusive, if LICENSEE's R&D SPENDING exceeds the MINIMUM INVESTMENT
for such year as set forth in Section 4.5.
(e) In all sublicenses granted by LICENSEE hereunder, LICENSEE shall include a
requirement that the sublicensee use commercially reasonable efforts to put
the subject matter of the sublicense into commercial use, provided that
such sublicensee is authorized to develop and sell to the public a [***
Redacted] covered by PATENT RIGHTS on its own behalf. LICENSEE shall
further provide that such sublicenses are subject and subordinate to the
terms and conditions of this Agreement, except for
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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the [*** Redacted] paid by such sublicensee to the LICENSEE. Copies of
all sublicense agreements hereunder shall be provided promptly to
HARVARD. All sublicense agreements of LICENSEE provided to HARVARD
shall deemed Confidential Information of LICENSEE subject to Section
11.1.
(f) At any time [*** Redacted] years after the effective date of this
Agreement, if LICENSEE is unable or unwilling to grant sublicenses,
either [*** Redacted] by HARVARD or by a [*** Redacted] or otherwise,
then HARVARD may directly license such [*** Redacted], but only if: (i)
LICENSEE is not currently pursuing development of LICENSED PRODUCTS for
the same application as contemplated by the potential sublicensee, or
LICENSEE commits to do so within a [*** Redacted] period, (ii) the
granting of such a license by HARVARD to the potential sublicensee will
increase the availability of useful products to the public, (iii) the
granting of such license by HARVARD will not materially adversely
affect LICENSEE's then current business or reasonably foreseeable
future business (e.g., such license is not intended for an application
competitive with LICENSEE) and (iv) HARVARD notifies LICENSEE of its
intention to grant such license and permits LICENSEE a reasonable
period to negotiate a sublicense on its own.
(g) To the extent required by law, until this license is rendered
non-exclusive in the United States under Section 3.2 (d), LICENSEE
shall cause any LICENSED PRODUCT produced for sale in the United States
to be manufactured substantially in the United States.
3.3 All rights reserved to the United States Government and others under Public
Law 96-517, and Public Law 98-620, shall remain and shall in no way be
affected by this Agreement.
3.4 HARVARD shall promptly notify LICENSEE when any new patent or patent
application arises from (i) research conducted in the laboratory of [***
Redacted], or (ii) improvements made by HARVARD under the direction of [***
Redacted] on the subject matter described in PATENT RIGHTS. If LICENSEE so
requests and the intellectual property is available for licensing, HARVARD
will evaluate in good faith LICENSEE's proposal along with proposals
received from any third parties. Any decision to grant a license to
LICENSEE shall be subject to approval by HARVARD's Committee on Patents and
Copyrights. In the event LICENSEE and HARVARD cannot agree on terms for a
license to any new intellectual property which is dominated by PATENT
RIGHTS, HARVARD shall not offer any third party terms more favorable than
the terms offered to LICENSEE.
ARTICLE IV
ROYALTIES
4.1 LICENSEE shall pay to HARVARD a non-refundable license royalty fee in the
sum of [*** Redacted] upon execution of this Agreement.
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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4.2 As consideration for the rights granted hereunder, LICENSEE shall pay to
HARVARD a non-refundable fee in the form of stock of LICENSEE as follows:
(i) LICENSEE shall issue to HARVARD [*** Redacted] fully vested
shares, at a price per share of $0.001 per share and an
aggregate value of $[*** Redacted] of LICENSEE's common stock
which represent [*** Redacted] percent ([*** Redacted]%) of the
reserved shares for founders (total [*** Redacted] shares) shown
on the capitalization table of LICENSEE attached as Appendix B
("Shares") upon execution of this Agreement, provided, however,
that HARVARD shall be subject to and enter into (1) appropriate
agreements and related documents as required of other
stockholders of LICENSEE, including without limitation a Common
Stock Purchase Agreement, and (2) a Voting Agreement by and
among the LICENSEE, HARVARD and certain other holders of common
stock of LICENSEE dated as of even date hereof.
(ii) HARVARD's ownership rights to Shares shall not be affected
should the license pursuant to this Agreement be terminated by
LICENSEE or HARVARD.
4.3 (a) LICENSEE shall pay to HARVARD during the term of this Agreement a
royalty on NET SALES by LICENSEE according to the following schedule:
(i) [*** Redacted]% of NET SALES by LICENSEE in [*** Redacted]
applications;
(ii) [*** Redacted]% of NET SALES by LICENSEE in [*** Redacted]
applications; or
(iii) [*** Redacted]% of NET SALES by LICENSEE in [*** Redacted]
applications.
In the event, any NET SALES by LICENSEE reasonably falls within more than
one of categories (i) to (iii) above, LICENSEE shall pay to HARVARD the
lowest applicable royalty set forth in such categories.
(b) For each LICENSED PRODUCT sold by LICENSEE, LICENSEE may credit up to
[*** Redacted] of royalties that LICENSEE is paying to third parties (or
HARVARD under agreements not included within section 4.3(c)) on
LICENSEE's sales of that LICENSED PRODUCT, provided that the royalty
paid to HARVARD shall not be reduced below [*** Redacted] percent
([*** Redacted]%) of the NET SALES of that LICENSED PRODUCT for which
such third party royalties are being paid.
(c) In the event that sales of a LICENSED PRODUCT are subject to the payment
of royalties under one or more of the RELATED LICENSE AGREEMENTS or any
license agreements with HARVARD with the same effective date as this
Agreement, then the total royalty payment due HARVARD under all such
agreements including this Agreement shall be at most the royalty payment
due under this Section 4.3 on such
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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NET SALE, no matter how many license agreements from HARVARD are involved,
and notwithstanding the terms of any such agreement. LICENSEE shall notify
HARVARD of the identity of each license agreement that includes patent
rights covering the product or process, and HARVARD shall distribute the
royalties evenly among such agreements, including this Agreement.
(d) LICENSEE shall pay HARVARD [*** Redacted] percent ([*** Redacted]%) of
SUBLICENSE INCOME received by LICENSEE for a sublicense of PATENT RIGHTS.
If compensation for such a sublicense of PATENT RIGHTS is bundled with
compensation received for the sublicensing of the other HARVARD patents
rights or other HARVARD intellectual property, licensed to LICENSEE under
the RELATED LICENSE AGREEMENTS or any agreements with HARVARD having the
same effective date as this Agreement, then LICENSEE shall pay HARVARD at
most the royalty payment due under this Section 4.3(d) for such SUBLICENSE
INCOME no matter how many license agreements from HARVARD are involved, and
notwithstanding the terms of any such license agreements. In such a case,
LICENSEE shall notify HARVARD of the identity of each license agreement
involved and HARVARD shall distribute the royalties equally among those
license agreements, including this Agreement.
(e) For provision of services under PATENT RIGHTS, LICENSEE shall pay a royalty
of [*** Redacted] percent ([*** Redacted]%) of SERVICE INCOME received by
LICENSEE from each and every third party ("Third Party") to whom LICENSEE
provides such services. In the event any services from which SERVICE INCOME
is derived are subject to the payment of royalties under the RELATED
LICENSE AGREEMENTS or any agreement with HARVARD having the same effective
date as this Agreement, then the total royalty due under all such
agreements, including this Agreement, shall be at most the royalty payment
due under this Section 4.3 on such services, no matter how many license
agreements from HARVARD are involved, and notwithstanding the terms of any
such license agreements. In such event, LICENSEE shall notify HARVARD of
the identity of each license agreement involved and HARVARD shall
distribute the royalties equally among those license agreements, including
this Agreement.
(f) If the license pursuant to this Agreement is converted to a non-exclusive
one under Section 3.2(d) and if another non-exclusive license to any of
PATENT RIGHTS is granted or otherwise exists for any field or territory,
then the royalty rate of this Agreement shall be adjusted so as not to
exceed the royalty rate payable by such other non-exclusive licensee under
such PATENT RIGHTS in such field or territory, provided that LICENSEE
agrees to amend this Agreement to include terms requested by HARVARD that
have been accepted by such other non-exclusive licensee.
(g) On sales between LICENSEE and its AFFILIATES for resale, the royalty shall
be paid on the NET SALES of the AFFILIATE.
(h) In the event that more than one VALID CLAIM within PATENT RIGHTS is
applicable to any LICENSED PRODUCT subject to royalties under this Section
4.3, then only one royalty shall be paid to HARVARD in respect of such
LICENSED PRODUCT. In no
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treatment filed with the Securities and Exchange Commission. Omitted portions
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event shall more than one royalty be due to HARVARD with respect to any
LICENSED PRODUCT unit; nor shall a royalty be payable under this Section
4.3 with respect to sales of LICENSED PRODUCTS for clinical trials or as
samples nor the use of LICENSED PRODUCTS or LICENSED PROCESSES by LICENSEE
for such purposes, in each case whether or not in collaboration with a
third party.
4.4 No later than January 1 of each calendar year after the effective date of
this Agreement, LICENSEE shall pay to HARVARD the following non-refundable
license maintenance royalty and/or advance on royalties. Such payments may
be credited against running royalties due for that calendar year and
Royalty Reports shall reflect such a credit. Such payments shall not be
credited against milestone payments (if any) nor against royalties due for
any subsequent calendar year.
<CAPTION>
January 1, 2002 [*** Redacted]
January 1, 2003 [*** Redacted]
January 1, 2004 [*** Redacted]
January 1, 2005 [*** Redacted]
January 1, 2006 [*** Redacted]
January 1, 2007 [*** Redacted]
each year thereafter [*** Redacted]
4.5 Notwithstanding Section 4.4, the minimum royalty set forth in Section 4.4
for the years 2002, 2003, and 2004 will be waived if LICENSEE's spending
on research and development (LICENSEE's "R&D SPENDING") exceeds the amount
set forth below for each category for such year (such amounts below, the
"MINIMUM INVESTMENT").
<CAPTION>
CHEMICAL AND
BIOLOGICAL SENSOR OPTOELECTRONICS NANOELECTRONICS
APPLICATIONS APPLICATIONS APPLICATIONS
Year 2002: [*** Redacted] [*** Redacted] [*** Redacted]
Year 2003: [*** Redacted] [*** Redacted] [*** Redacted]
Year 2004: [*** Redacted] [*** Redacted] [*** Redacted]
Year 2005 [*** Redacted] [*** Redacted] [*** Redacted]
Year 2006 [*** Redacted] [*** Redacted] [*** Redacted]
Each Year Thereafter [*** Redacted] [*** Redacted] [*** Redacted]
LICENSEE's MINIMUM INVESTMENT may be allocated by LICENSEE in any way
within the three categories set forth above among the different subject
matter of the RELATED LICENSE AGREEMENTS.
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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ARTICLE V
REPORTING
5.1 Within [*** Redacted] months of the Effective Date, LICENSEE will provide
to HARVARD a written research and development plan acceptable to LICENSEE's
investors under which LICENSEE intends to bring the subject matter of the
licenses granted hereunder into commercial use upon execution of this
Agreement. Such plan will include projections of sales and proposed
marketing efforts. It is understood that LICENSEE may provide one research
and development plan for all RELATED LICENSE AGREEMENTS.
5.2 No later than [*** Redacted] days after [*** Redacted] of each calendar
year, LICENSEE shall provide to HARVARD a written annual Progress Report
describing progress on the commercialization of PATENT RIGHTS during the
most recent [*** Redacted] month period ending [*** Redacted], the amount
of LICENSEE's R&D SPENDING relating to the subject matter described or
claimed in PATENT RIGHTS during such time, and plans for the forthcoming
year. If multiple technologies are covered by the license granted
hereunder, the Progress Report shall provide the information set forth
above for each technology. If progress differs from that anticipated in the
plan required under Section 5.1, LICENSEE shall explain the reasons for the
difference and, if appropriate or necessary, provide a modified research
and development plan for HARVARD's review. It is understood that LICENSEE
may provide one Progress Report covering all RELATED LICENSE AGREEMENTS.
5.3 LICENSEE shall report to HARVARD the date of its first NET SALE of a
LICENSED PRODUCT (or the date of its first use of a LICENSED PROCESS from
which SERVICE INCOME is derived) in each country within [*** Redacted] days
of occurrence. It is understood that LICENSEE shall be obligated to report
the date of first sale of LICENSED PRODUCTS (or the first commercial use of
LICENSED PROCESSES) under this Section 5.3 only once for each country.
5.4 (a) LICENSEE shall submit to HARVARD within [*** Redacted] days after each
calendar [*** Redacted] ending [*** Redacted], a Royalty Report setting
forth, for the most recent [*** Redacted] that ended on [*** Redacted], at
least the following information:
(i) the number and identification of LICENSED PRODUCTS sold by
LICENSEE that constitute a NET SALE, in each country;
(ii) total amounts received for such LICENSED PRODUCTS;
(iii) an accounting for all LICENSED PROCESSES used or sold;
(iv) deductions applicable to determine the NET SALES thereof;
(v) the amount of SUBLICENSE INCOME received by LICENSEE;
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treatment filed with the Securities and Exchange Commission. Omitted portions
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(vi) the amount of SERVICE INCOME received by LICENSEE; and
(vii) the amount of royalty due for such reporting period, or, if
no royalties are due to HARVARD for such reporting period,
the statement that no royalties are due.
Such report shall be certified as correct by an officer of LICENSEE
and shall include a listing of all deductions from royalties. It is
understood that LICENSEE may submit one Royalty Report covering all
RELATED LICENSE AGREEMENTS. However, the Royalty Report shall, for
each type of income, provide a detailed listing of the RELATED LICENSE
AGREEMENTS that are involved.
(b) LICENSEE shall pay to HARVARD with each such Royalty Report the amount
of royalty due with respect to such [*** Redacted]. If multiple
technologies are covered by the license granted hereunder, LICENSEE
shall specify which PATENT RIGHTS are utilized for each category of
LICENSED PRODUCTS and/or LICENSED PROCESSES for which royalties are
separately reported in the Royalty Report.
(c) All payments due hereunder shall be deemed received when funds are
credited to HARVARD's bank account and shall be payable by check or
wire transfer in United States dollars. Conversion of foreign currency
to U.S. dollars shall be made at the conversion rate existing in the
United States (as reported in the New York Times or the Wall Street
Journal) on the last working day of each royalty period. No transfer,
exchange, collection or other charges shall be deducted from such
payments. If legal restrictions block the removal of local currency
from any country where a LICENSED PRODUCT is sold, the royalties
payable under this Agreement on NET SALES, SERVICE INCOME and
SUBLICENSING INCOME earned in such currency in such country shall
continue to be reported and accrued, but will not be paid until such
currency may be removed from such country.
(d) All plans or reports received under Sections 5.1, 5.2, 5.3, 5.4 shall
deemed Confidential Information of LICENSEE subject to Section 11.1;
provided, however, that HARVARD may disclose such information as
required by law under Section 11.1(b), and may include in its usual
reports the annual amounts of royalties paid.
(e) Late payments shall be subject to a charge of [*** Redacted] percent
([***Redacted]%) per month, or $[*** Redacted], whichever is greater.
5.5 In the event of acquisition, merger, change of corporate name, or change of
make-up, organization, or identity, LICENSEE shall notify HARVARD in
writing within [*** Redacted] days of such event.
5.6 If LICENSEE or any of its sublicensees does not qualify as a "small entity"
as provided by the United States Patent and Trademark Office, LICENSEE must
notify HARVARD immediately.
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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ARTICLE VI
RECORD KEEPING
6.1 LICENSEE shall keep accurate records (together with supporting
documentation) of LICENSED PRODUCTS made, used or sold under this
Agreement, sufficient to determine the amount of royalties due to HARVARD
hereunder. Such records shall be retained for at least [*** Redacted] years
following the end of the reporting period to which they relate. They shall
be available during normal business hours for examination, upon HARVARD's
reasonable request, not more than once in any [*** Redacted] month period
and upon at least [*** Redacted] days prior notice, by an independent
accountant under a duty of confidentiality, selected by HARVARD and
reasonably acceptable to LICENSEE, for the sole purpose of verifying
reports and payments under Section 5.4. In conducting examinations pursuant
to this Section, HARVARD's accountant shall have access to records
materially relevant to the calculation of royalties under Article IV.
6.2 HARVARD's accountant shall only disclose to HARVARD whether the reports
and payments of royalties hereunder are accurate, and the amount of the
underreporting or underpayment of royalties by LICENSEE, if any.
6.3 Such examination of HARVARD's accountant shall be at HARVARD's expense,
except that if such examination shows an underreporting or underpayment in
excess of [*** Redacted] percent ([*** Redacted]%) for any [*** Redacted]
month period, then LICENSEE shall pay the reasonable out-of-pocket cost of
such examination as well as any additional sum that would have been payable
to HARVARD had the LICENSEE reported correctly, plus interest on said sum
at the rate of [*** Redacted] percent ([*** Redacted]%) per month.
ARTICLE VII
DOMESTIC AND FOREIGN PATENT FILING AND MAINTENANCE
7.1 Within 30 days of the closing of LICENSEE's sale of Series A Preferred
Stock to venture capital investors, but not later than 60 days after the
Effective Date, LICENSEE shall reimburse HARVARD for [*** Redacted] percent
([*** Redacted]%) of all reasonable out-of-pocket expenses HARVARD has
incurred for the preparation, filing, prosecution and maintenance of PATENT
RIGHTS, including for counseling with regard to such preparation, filing,
prosecution and maintenance. [*** Redacted] percent of such expenses total
$[*** Redacted] as of the most recent invoice paid by HARVARD. Thereafter,
LICENSEE shall reimburse HARVARD for [*** Redacted] percent ([***
Redacted]%) of all such future expenses upon receipt of quarterly invoices
from HARVARD. Should this license be converted to an exclusive one,
LICENSEE shall then reimburse all such expenses. Late payment of these
invoices shall be subject to interest charges of [*** Redacted] percent
([*** Redacted]%) per month.
HARVARD shall be responsible for the preparation, filing, prosecution and
maintenance of any and all patent applications and patents included in
PATENT RIGHTS.
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treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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HARVARD will instruct counsel to directly notify HARVARD and LICENSEE and
provide them copies of any communications to and from the United States and
foreign patent offices relating to said prosecution, and drafts of all
communications to the various patent offices, and will instruct counsel to
consider any comments on such drafts, so that LICENSEE will be informed and
apprised of the continuing prosecution of patent applications in PATENT
RIGHTS. LICENSEE (as well as NANTERO) shall have reasonable opportunity to
participate in decision making on key decisions affecting filing,
prosecution and maintenance of patents and patent applications in PATENT
RIGHTS.
7.2 HARVARD and LICENSEE shall cooperate fully in the preparation, filing,
prosecution and maintenance of PATENT RIGHTS and of all patents and patent
applications licensed to LICENSEE hereunder, executing all papers and
instruments or requiring members of HARVARD to execute such papers and
instruments so as to enable HARVARD to apply for, to prosecute and to
maintain patent applications and patents in HARVARD's name in any country.
Each party shall provide to the other [*** Redacted] notice as to all
matters which come to its attention and which may affect the preparation,
filing, prosecution or maintenance of any such patent applications or
patents. In particular, LICENSEE must immediately notify HARVARD if
LICENSEE does not qualify as a "small entity" as provided by the United
States Patent and Trademark Office.
7.3 LICENSEE may elect to surrender its rights to any patent or patent
application within PATENT RIGHTS in any country upon [*** Redacted] days
written notice to HARVARD. Such notice shall not relieve LICENSEE from
responsibility to reimburse HARVARD for expenses under Section 7.1 relating
to the filing, prosecution or maintenance of such patent or patent
application incurred prior to the receipt of the written notice by HARVARD
(or a longer period if specified in LICENSEE'S notice).
ARTICLE VIII
INFRINGEMENT
8.1 With respect to any PATENT RIGHTS that have not been rendered non-exclusive
under Section 4.3(d), LICENSEE shall have the right to enforce in its own
name and at its own expense any patents within such PATENT RIGHTS. HARVARD
agrees to notify LICENSEE promptly of each infringement of such patents of
which HARVARD is or becomes aware.
8.2 LICENSEE acknowledges that the other co-exclusive licensee of PATENT RIGHTS
shall have rights identical to LICENSEE to prosecute infringers and that
both co-exclusive licensees shall be bound by the identical terms of this
Section 8.2. In any prosecution instituted by LICENSEE, LICENSEE must
notify the other co-exclusive licensee of the existence of such legal
action and allow the other co-exclusive licensee to join as a plaintiff. In
addition, in the event the other co-exclusive licensee instigates and
infringement prosecution, LICENSEE hereby consents to being joined as a
plaintiff in such suit solely for the purpose of procuring standing to
bring the action and at the sole expenses of the instigating party. To the
extent that LICENSEE desires to participate in
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treatment filed with the Securities and Exchange Commission. Omitted portions
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any strategic decisions affecting the prosecution of an action brought by
the other co-exclusive licensee, LICENSEE acknowledges and it and the other
co-exclusive licensee will necessarily have to reach a mutual agreement
concerning litigation expenses and strategy. In no event shall HARVARD
incur any liability or expense in connection with any action brought by
LICENSEE or the other co-exclusive licensee, joint or otherwise. During any
such litigation, HARVARD will agree to not license any defendant or accused
infringer of the PATENT RIGHTS in the litigation, without LICENSEE's prior
written consent.
8.3 (a) If LICENSEE elects to commence an action as described above, HARVARD
may, to the extent permitted by law, elect to join as a party in that
action. Regardless of whether HARVARD elects to join as a party, HARVARD
shall cooperate fully with LICENSEE in connection with any such action,
including making available relevant personnel, information, records,
papers, samples, specimens and other similar materials for the purposes of
such action as reasonably requested by LICENSEE through the Office of
Technology and Trademark Licensing at HARVARD.
(b) If HARVARD elects to join as a party pursuant to Subsection (a),
HARVARD shall jointly control the action with LICENSEE.
(c) LICENSEE shall reimburse HARVARD for any out-of-pocket costs HARVARD
reasonably incurs, including reasonable attorneys' fees, as part of an
action brought by LICENSEE under Section 8.1, whether or not HARVARD
becomes a co-plaintiff.
8.4 If LICENSEE elects to commence an action as described above, LICENSEE may
deduct from its royalty payments to HARVARD with respect to the patent(s)
subject to suit an amount not exceeding [*** Redacted] percent ([***
Redacted]%) of LICENSEE's expenses and costs of such action, including
reasonable attorneys' fees and reimbursement of amounts under Section
8.3(c) above; provided, however, that such reduction shall not exceed [***
Redacted] percent [[*** Redacted]%] of the [*** Redacted] due to HARVARD
with respect to the patent(s) subject to suit for each calendar year. If
such [*** Redacted] percent [*** Redacted] of LICENSEE's expenses and costs
exceeds the amount of [*** Redacted] deducted by LICENSEE for any calendar
year, LICENSEE may to that extent reduce the [*** Redacted] due to HARVARD
from LICENSEE in succeeding calendar years, but never by more than [***
Redacted] percent [*** Redacted] of the [*** Redacted] due in any [***
Redacted] with respect to the patent(s) subject to suit.
8.5 Neither LICENSEE nor the other co-exclusive licensee may enter into a
settlement, consent judgment or other voluntary final disposition of any
suit under Article 8 (except for Section 8.10) without the prior written
consent of HARVARD, which consent shall not be unreasonably withheld.
8.6 Recoveries or reimbursements from actions commenced by LICENSEE pursuant to
this Article shall first be applied to reimburse LICENSEE and HARVARD for
litigation costs not paid from royalties and [*** Redacted] pursuant to
Section 8.4. Any remaining recoveries or reimbursements shall be shared as
follows: [*** Redacted]% to LICENSEE and [*** Redacted]% to HARVARD. In the
event both co-
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treatment filed with the Securities and Exchange Commission. Omitted portions
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exclusive licensees undertake the suit, the provisions of this Section
will be modified to take into account each licensee's expenses and lost
profits/revenues. Such modification shall be negotiated by the parties
and the other co-exclusive licensee in good faith.
8.7 If LICENSEE elects not to exercise its right to enforce the PATENT RIGHTS
against any infringement pursuant to this Article, HARVARD may do so at
its own expense, controlling such action and retaining all recoveries
therefrom. LICENSEE shall cooperate fully with HARVARD in connection with
any such action.
8.8 Without limiting the generality of Section 8.7, HARVARD may, at its
election and by notice to LICENSEE, establish a time limit of
[*** Redacted] days for LICENSEE to decide whether to enforce the PATENT
RIGHTS against any infringement of which HARVARD is or becomes aware. If,
by the end of such [*** Redacted] day period, LICENSEE has not commenced
such an action or taken reasonable efforts to settle such infringement,
HARVARD may enforce the PATENT RIGHTS against such an infringement at its
own expense, controlling such action and retaining all recoveries
therefrom. Notwithstanding sections 8.7 and 8.8, HARVARD shall not bring
any action alleging the infringement of PATENT RIGHTS against any
sublicensee of LICENSEE under PATENT RIGHTS, without the consent of
LICENSEE.
8.9 If a declaratory judgment action is brought naming LICENSEE as a
defendant and alleging invalidity of any of the PATENT RIGHTS, if both
parties agree, HARVARD may take over the sole defense of the action at
its own expense. LICENSEE shall cooperate fully with HARVARD in
connection with any such action.
8.10 If LICENSEE or any sublicensee, distributor or other customer is sued by a
third party charging infringement of patent rights that dominate a claim
of PATENT RIGHTS, with respect to the manufacture, use, distribution or
sale of LICENSED PRODUCT or practice or use of a LICENSED PROCESS,
LICENSEE will promptly notify HARVARD. As between the parties to this
Agreement, LICENSEE will be entitled to control the defense in any such
action(s) and withhold up to [*** Redacted] ( [*** Redacted]) of the
amount otherwise payable to HARVARD hereunder to pay for defense costs,
attorneys fees and any liability incurred in such infringement suit(s). If
Licensee is required to pay a royalty or other amount to a third party as
a result of a final judgment or settlement, the amounts payable to HARVARD
hereunder will be reduced as provided in Section 4.3 above.
ARTICLE IX
TERMINATION OF AGREEMENT
9.1 This Agreement, unless terminated as provided herein, shall remain in
effect until the last patent or patent application in PATENT RIGHTS has
expired or been abandoned.
9.2 HARVARD may terminate this agreement as follows:
(a) If LICENSEE does not make a payment due hereunder and fails to cure
such non-payment (including the payment of interest in accordance
with Section 5.4(e)) within [*** Redacted] days after date of
notice in writing of such non-payment by
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HARVARD. If LICENSEE disputes the amount of such non-payment in writing
within such [*** Redacted] day period, HARVARD shall not have the right
to terminate this Agreement until it has been determined in an
arbitration proceeding under Section 11.10 below that LICENSEE has
failed to pay amounts owed hereunder, and thereafter Licensee does not
cure such failure within [*** Redacted] days after such determination.
This Section 9.2(a) shall not, however, suspend any obligation of
LICENSEE to compensate HARVARD for any undisputed amounts, as provided
for under any term of this Agreement, during the pendency of the
foregoing arbitration and cure period.
(b) If LICENSEE defaults in its obligations under Sections 11.2(c) and
11.2(d) to procure and maintain insurance, and fails to cure such
breach within [*** Redacted] days after notice in writing of such
breach by HARVARD.
(c) If LICENSEE shall make an assignment for the benefit of creditors, or
shall have a petition in bankruptcy filed for or against it, provided
that such bankruptcy petition is not dismissed within [*** Redacted]
days after its filing. Such termination shall be effective immediately
upon HARVARD giving written notice to LICENSEE.
(d) If LICENSEE is convicted of a felony within the United States relating
to the manufacture, use, or sale of LICENSED PRODUCTS.
(e) Except as provided in Subsections (a), (b), (c), (d) above, if LICENSEE
materially breaches any obligations under this Agreement and the breach
has not been cured within [*** Redacted] days after the date of
notice in writing of such breach by HARVARD. If LICENSEE disputes in
writing that it has materially breached this Agreement within such
[*** Redacted] day period, HARVARD shall not have the right to
terminate this Agreement until it has been determined in an arbitration
proceeding under Section 11.10 below that LICENSEE has materially
breached this Agreement, and thereafter Licensee does not cure such
breach within [*** Redacted] days after such determination. This
Section 9.2(e) shall not, however, suspend any obligation of LICENSEE
to compensate HARVARD for any undisputed amounts, as provided for under
any term of this Agreement, during the pendency of the foregoing
arbitration and cure period.
9.3 All sublicenses granted by LICENSEE under this Agreement in compliance
with the terms and conditions hereof shall survive the termination of this
Agreement upon the request of the party to whom such sublicense is
granted, provided that such party agrees in writing that (i) it will pay
all royalties or other amounts that otherwise would have been due
thereafter under such sublicense directly to HARVARD rather than LICENSEE,
and (ii) HARVARD shall not be held liable for the breach or the
performance of any obligations stated in such sublicense unless such
obligations have been expressly assumed in writing by HARVARD.
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treatment filed with the Securities and Exchange Commission. Omitted portions
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9.4 LICENSEE may terminate this Agreement by giving [*** Redacted] days advance
written notice of termination to HARVARD. Upon termination, LICENSEE shall
promptly submit a Royalty Report to HARVARD for the final reporting period
and any royalty payments incurred during such reporting period, and any
unreimbursed patent expenses under Section 7 that have been invoiced by
HARVARD, shall become immediately payable with such Royalty Report.
9.5 Articles I, VI, IX, X and XI (except for Section 11.7) of this Agreement
shall survive termination. Article VIII shall survive with respect to any
infringement of third parties and/or any lawsuits filed by or against
LICENSEE, prior to the termination of this Agreement. In the event this
Agreement is terminated for any reason, LICENSEE may, within [*** Redacted]
after the effective date of such termination, sell or otherwise dispose of
all LICENSED PRODUCTS that LICENSEE may have on hand on the effective date
of such termination, and fulfill any contracts requiring the use of
LICENSED PRODUCTS and/or LICENSED PROCESSES that LICENSEE may have entered
into prior to the date of such termination, subject to LICENSEE's payment
of amounts due to HARVARD under Section 4.3 of this Agreement.
9.6 In the event that after termination of this Agreement, HARVARD licenses
PATENT RIGHTS to another licensee, HARVARD shall use commercially
reasonable efforts to require such other licensee to pay the costs of the
preparation, filing, prosecution and maintenance of PATENT RIGHTS. HARVARD
shall reimburse LICENSEE for any costs so paid by such other licensee to
the extent LICENSEE paid for such costs under Section 7.1.
ARTICLE X
REPRESENTATIONS AND WARRANTIES
10.1 Except for the rights, if any, of the Government of the United States,
HARVARD represents and warrants that:
(a) HARVARD is the owner of the entire right, title and interest in and to
the PATENT RIGHTS as they exist on the Effective Date;
(b) HARVARD has the right and authority to enter into this Agreement and
grant the rights and licenses set forth herein, including without
limitation under PATENT RIGHTS;
(c) HARVARD has not previously granted, and will not grant in the future,
any rights in the PATENT RIGHTS that are inconsistent with the rights
and licenses granted to LICENSEE herein;
(d) To the best knowledge of HARVARD without having made an investigation,
as of the Effective Date, practice of inventions within the PATENT
RIGHTS does not infringe any patent rights, trade secrets or other
proprietary rights of any third party,
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treatment filed with the Securities and Exchange Commission. Omitted portions
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(e) To the best knowledge of HARVARD, as of the Effective Date,
HARVARD does not own any rights in any other patent application,
the claims of which would dominate the claims of a patent or
patent application within the PATENT RIGHTS, or any practice of
PATENT RIGHTS. IF HARVARD owns, now or thereafter, any such
rights in such patents or patent applications on which
[*** Redacted] is an inventor, HARVARD will negotiate in good
faith to the extent it has the legal right to do so with LICENSEE
to grant LICENSEE rights to the extent sufficient to practice
PATENT RIGHTS.
(f) To the best knowledge of HARVARD, all prior and current
agreements between HARVARD and other sponsors of research under
which HARVARD has obligations relating to PATENT RIGHTS are
listed on Appendix C.
10.2 Except as set forth in this Agreement, HARVARD does not warrant the
validity of the PATENT RIGHTS licensed hereunder and makes no
representations whatsoever with regard to the scope of the licensed
PATENT RIGHTS or that such PATENT RIGHTS may be exploited by
LICENSEE, an AFFILIATE, or sublicensee without infringing other
patents.
10.3 EXCEPT FOR THE WARRANTIES STATED IN THIS AGREEMENT, HARVARD
EXPRESSLY DISCLAIMS ANY AND ALL IMPLIED OR EXPRESS WARRANTIES AND
MAKES NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS
FOR ANY PARTICULAR PURPOSE OF THE PATENT RIGHTS OR INFORMATION
SUPPLIED BY HARVARD, LICENSED PROCESSES OR LICENSED PRODUCTS
CONTEMPLATED BY THIS AGREEMENT.
ARTICLE XI
GENERAL
11.1 (a) The parties may, from time to time, in connection with this
Agreement disclose to each Confidential Information. Any
Confidential Information shall be in writing and marked
"confidential" and disclosed only to the Office of Technology and
Trademark Licensing. As used in this Agreement, "Confidential
Information" of a party shall mean (i) any information disclosed
in writing by such party to the other party, which is marked by
such party with the legend "CONFIDENTIAL" or other similar legend
sufficient to identify the information as its confidential
information, (ii) any information disclosed orally by such party
to the other party which is identified as confidential at the
time of disclosure and is confirmed as confidential in writing
within thirty (30) days after such time of disclosure, or (iii)
any information deemed "Confidential Information under the terms
of this Agreement. With respect to categories (i) and (ii) above,
"Confidential Information" shall not include any information that
is: (1) already known to the receiving party at the time of
disclosure hereunder, or (2) now or hereafter becomes publicly
known other than through acts or omissions of the receiving
party, or (3) is disclosed to the receiving party by a third
party under no obligation of confidentiality
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treatment filed with the Securities and Exchange Commission. Omitted portions
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to the disclosing party or (4) is independently developed by the
receiving party without use of the Confidential Information of the
disclosing party.
(b) Each party shall maintain in confidence, and shall not use for any
purpose or disclose to any third party, the Confidential Information
of the other party. Notwithstanding the foregoing, the receiving party
may use or disclose the Confidential Information of the disclosing
party (i) to the extent necessary to exercise its rights or fulfill
its obligations and/or duties under this Agreement, and (ii) to comply
with applicable law or governmental regulations or court order,
provided that the receiving party will give reasonable advance notice
to the disclosing party, and will use its reasonable efforts to
minimize the disclosure of Confidential Information and to secure
confidential treatment of any Confidential Information disclosed.
(c) The terms of this Agreement shall be deemed "Confidential Information"
of both parties. In addition to the permissible disclosures set forth
in subsection (b) above, LICENSEE may disclose such terms in
confidence to its financial and legal advisors, consultants, potential
or actual investors, potential or actual merger or acquisition
partners, and others on a need-to-know basis.
11.2 (a) LICENSEE shall indemnify, defend and hold harmless HARVARD and its
current or former and future directors, governing board members,
trustees, officers, faculty and employees (collectively, the
"INDEMNITEES"), from and against any lawsuit or cause or action
against the INDEMNITEES brought by a third party (collectively,
"Claims"), based upon, arising out of, or otherwise relating to this
Agreement, including without limitation any cause of action relating
to product liability concerning any product, process, or service made,
used or sold pursuant to any right of license granted under this
Agreement, except to the extent such Claims arise out of or otherwise
relate to the gross negligence or intentional misconduct of any
INDEMNITEES; and further provided that (i) LICENSEE receives prompt
notice of any such Claims; (ii) LICENSEE is given the exclusive right
to control the defense and settlement of such Claims; and (iii)
LICENSEE shall not be obligated to indemnify any INDEMNITEE in
connection with any settlement for any Claim unless LICENSEE consents
in writing to such settlement.
(b) LICENSEE shall, at its own expense, defend against any actions brought
or filed against any INDEMNITEE hereunder with respect to the subject
of indemnity contained herein, whether or not such actions are
rightfully brought.
(c) Beginning at the time any such product, process or service is being
commercially distributed or sold (other than for the purpose of
obtaining regulatory approvals) by LICENSEE or by a SUBLICENSEE,
AFFILIATE or agent of LICENSEE, LICENSEE shall, at its sold cost and
expense, procure and maintain commercial general liability insurance
in amounts not less than $[*** Redacted] per incident and $[***
Redacted] annual aggregate and naming the Indemnitees as additional
insureds. During clinical trials of any such product, process or
service, LICENSEE shall, at its sole cost and expense, procure and
maintain commercial general liability insurance in such equal or
lesser amount as HARVARD shall require, naming the Indemnitees as
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additional insureds. Such commercial general liability insurance shall
provide: (i) product liability coverage; and (ii) broad form
contractual liability coverage for LICENSEE's indemnification under
this Agreement. If LICENSEE elects to self-insure all or part of the
limits described above (including deductibles or retentions which are
in excess of $[*** Redacted] annual aggregate) such self-insurance
program must be acceptable to HARVARD and the Risk Management
Foundation of the Harvard Medical Institutions, Inc. in their sole
discretion. The minimum amounts of insurance coverage required shall
not be construed to create a limit of LICENSEE's liability with
respect to its indemnification under this Agreement.
(d) LICENSEE shall provide HARVARD with written evidence of such
insurance upon request of HARVARD. LICENSEE shall provide HARVARD with
written notice at least fifteen (15) days prior to the cancellation,
non-renewal or material change in such insurance; if LICENSEE does not
obtain replacement insurance providing comparable coverage within such
fifteen (15) day period, HARVARD shall have the right to terminate
this Agreement in accordance with Section 9.2(c).
(e) LICENSEE shall maintain such commercial general liability insurance
beyond the expiration or termination of this Agreement during: (i) the
period that any product, process, or service, relating to, or
developed pursuant to, this Agreement is being commercially
distributed or sold by LICENSEE or by a sublicensee, AFFILIATE or
agent of LICENSEE; and (ii) a reasonable period after the period
referred to in Subsection (e)(i) above which in no event shall be less
than [*** Redacted] years.
11.3 Nothing in this Agreement shall be construed as conferring any right to use
HARVARD's name or insignia, or any adaptation of them, or the name of any
of HARVARD's inventors in any advertising, promotional or sales literature
without the prior written approval of HARVARD, or the inventor in the case
of the use of the name of an inventor.
11.4 Except as stated in this Section 11.4, without the prior written approval
of HARVARD in each instance, neither this Agreement nor the rights granted
hereunder shall be transferred or assigned in whole or in part by LICENSEE
to any person whether voluntarily or involuntarily, by operation of law or
otherwise. LICENSEE may transfer or assign this Agreement and all rights
hereunder, upon notice to HARVARD but without its consent, to any entity
that succeeds to all or substantially all of the business of LICENSEE to
which this Agreement pertains, whether by merger, operation of law,
purchase or sale of all or substantially all of LICENSEE's stock or assets
or otherwise; provided that such assignee or transferee promptly agrees in
writing to be bound by the terms and conditions of this Agreement. Subject
to the foregoing, this Agreement shall be binding upon the respective
successors, legal representatives and assignees of HARVARD and LICENSEE.
11.5 The interpretation and application of the provisions of this Agreement
shall be governed by the laws of the Commonwealth of Massachusetts.
11.6 LICENSEE shall comply with all applicable laws and regulations. In
particular, it is understood and acknowledged that the transfer of certain
commodities and technical data
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treatment filed with the Securities and Exchange Commission. Omitted portions
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is subject to United States laws and regulations controlling the export of
such commodities and technical data, including all Export Administration
Regulations of the United States Department of Commerce. These laws and
regulations among other things, prohibit or require a license for the
export of certain types of technical data to certain specified countries.
LICENSEE hereby agrees and gives written assurance that it will comply with
all United States laws and regulations controlling the export of
commodities and technical data, that it will be solely responsible for any
violation of such by LICENSEE or its AFFILIATES or sublicensees, and that
it will defend and hold HARVARD harmless in the event of any legal action
of any nature occasioned by such violation with respect to LICENSED
PRODUCTS.
11.7 LICENSEE agrees: (i) to obtain all regulatory approvals required for the
manufacture and sale of LICENSED PRODUCTS and LICENSED PROCESSES; and (ii)
to mark LICENSED PRODUCTS with the numbers of the applicable patents within
PATENT RIGHTS, to the extent required by law. LICENSEE also agrees to
register or record this Agreement as is required by law or regulation in
any country where the license is in effect, and HARVARD shall cooperate
fully with LICENSEE in connection with any such registration or
recordation.
11.8 Any notices to be given hereunder shall be sufficient if signed by the
party (or party's attorney) giving same and either: (i) delivered in
person; (ii) mailed certified mail return receipt requested; or (iii) faxed
to other party if the sender has evidence of successful transmission and if
the sender promptly sends the original by ordinary mail, in any event to
the following addresses:
If to LICENSEE:
c/o CW Group East
1041 Third Avenue
New York, New York 10021
Attn: Lawrence A. Bock
Fax: 212/644-0354
cc: Wilson, Sonsini, Goodrich & Rosati
650 Page Mill Road
Palo Alto, California 94304
Attn: Michael J. O'Donnell, Esq.
Fax: 650/493-6811
If to HARVARD:
Office for Technology and Trademark Licensing
Harvard University
Holyoke Center, Suite 727
1350 Massachusetts Avenue
Cambridge, MA 02138
Fax: (617)495-9568
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By such notice either party may change their address for future notices.
Notices delivered in person shall be deemed given on the date delivered.
Notices sent by fax shall be deemed given on the date faxed. Notices
mailed shall be deemed given on the date postmarked on the envelope.
11.9 Should a court of competent jurisdiction later hold any provision of this
Agreement to be invalid, illegal, or unenforceable, and such holding is
not reversed on appeal, it shall be considered severed from this
Agreement. All other provisions, rights and obligations shall continue
without regard to the severed provision, provided that the remaining
provisions of this Agreement are in accordance with the intention of the
parties.
11.10 In the event of any controversy or claim arising out of or relating to
any provision of this Agreement or the breach thereof, the parties shall
try to settle such conflict amicably between themselves. Subject to the
limitation stated in the final sentence of this Section, any such
conflict which the parties are unable to resolve promptly shall be
settled through arbitration conducted in accordance with the rules of the
American Arbitration Association. The demand for arbitration shall be
filed within a reasonable time after the controversy or claim has arisen,
and in no event after the date upon which institution of legal
proceedings based on such controversy or claim would be barred by the
applicable statute of limitation. Such arbitration shall be held in
Boston, Massachusetts. The award through arbitration shall be final and
binding. Either party may enter any such award in a court having
jurisdiction or may make application to such court for judicial
acceptance of the award and an order of enforcement, as the case may be.
Notwithstanding the foregoing, either party may, without recourse to
arbitration, assert against the other party a third-party claim or
cross-claim in any action brought by a third party, to which the subject
matter of this Agreement may be relevant.
11.11 This Agreement constitutes the entire understanding between the parties
and neither party shall be obligated by any condition or representation
other than those expressly stated herein or as may be subsequently agreed
to by the parties hereto in writing.
11.12 Nothing in this Agreement shall be deemed to require LICENSEE to exploit
the PATENT RIGHTS, except to the extent expressly set forth in this
Agreement, and nothing in this Agreement shall be deemed to prevent
LICENSEE from commercializing products similar to or competitive with a
LICENSED PRODUCT.
11.13 The relationship between HARVARD and LICENSEE established by this
Agreement is that of independent contractors. Nothing in this Agreement
shall be construed to create any other relationship between HARVARD and
LICENSEE. Neither party shall have any right, power or authority to
assume, create or incur any expense, liability or obligation, express or
implied, on behalf of the other.
11.14 In the event either party hereto is prevented from or delayed in the
performance of any of its obligations hereunder by reason of acts of God,
war, strikes, riots, storms, fires or any other cause whatsoever beyond
the reasonable control of the party, the party so prevented
24
<PAGE>
or delayed shall be excused from the performance of any such obligation
to the extent and during the period of such prevention or delay.
11.15 NEITHER PARTY SHALL BE LIABLE TO THE OTHER PARTY OR TO ANY THIRD PARTY
FOR ANY SPECIAL, CONSEQUENTIAL, EXEMPLARY OR INCIDENTAL DAMAGES
(INCLUDING LOST OR ANTICIPATED REVENUES OR PROFITS RELATING TO THE SAME),
ARISING FROM ANY CLAIM RELATING TO THIS AGREEMENT, WHETHER SUCH CLAIM IS
BASED ON CONTRACT, TORT (INCLUDING NEGLIGENCE) OR OTHERWISE, EVEN IF AN
AUTHORIZED REPRESENTATIVE OF SUCH PARTY IS ADVISED OF THE POSSIBILITY OF
LIKELIHOOD OF SAME.
11.16 This Agreement may be executed in counterparts, each of which shall be
deemed an original, but both of which together shall constitute one and
the same instrument.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed by their duly authorized representatives.
<Caption>
PRESIDENT AND FELLOWS COMPANY
OF HARVARD COLLEGE
/s/ Joyce Brinton /s/ Lawrence A. Bock
--------------------------------------------- ---------------------------------------------
Joyce Brinton, Director Signature
Office for Technology and Trademark Licensing
Lawrence A. Bock
---------------------------------------------
Name
10/2/01 President and CEO
--------------------------------------------- ---------------------------------------------
Date Title
10/3/01
---------------------------------------------
Date
25
<PAGE>
APPENDIX A
The following comprise PATENT RIGHTS:
[*** Redacted]
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
26
<PAGE>
APPENDIX B
NANOSYS, INC. CAPITALIZATION TABLE - CONFIDENTIAL
FOUNDERS' STOCK (Common Stock Capitalization Before Series A Preferred Stock
Financing)
<Caption>
% of Founders Stock # of Shares of Common Stock Amount Invested
[*** Redacted]# 11.0% 550,000 $550
[*** Redacted]# 9.0% 450,000 $450
[*** Redacted]@ 2.0% 100,000 $100
CW Group * 12.0% 600,000 $600
Other advisor (tbd) 2% 100,000 $100
Reserve 64.0% 3,200,000 $3,200
Total Common Shares 100.0% 5,000,000 $5,000
PROPOSED SERIES A PREFERRED
STOCK
Investors as a group 5,000,000-6,666,667 $1,500-2,000,000
Total Series A Preferred Shares 5,000,000-6,666,667 $1,500-2,000,000
# Founders stock will vest monthly over a five year period
@ [*** Redacted] shares will be fully vested
* Shares will be issued in the form of an option
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
<PAGE>
APPENDIX C
CASE LEAD INVENTOR REPORT TITLE AGENCY GRANT NUMBERS
DATE
[*** Redacted]
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.