License Agreement - Harvard College and Nanosys Inc.
LICENCE 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 PURPOSE: use of PATENT RIGHTS solely for academic
non-commercial research or other non-for-profit scholarly purposes,
which use in 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 a free 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 PURPOSE.
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 control
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 Centre, 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, substitution 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-parts 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 SERVICES 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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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, of (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 PAYMENT: [*** Redacted]
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 United
States Patents [*** Redacted], issued [*** Redacted] and [*** Redacted]
issued [*** Redacted] entitled [*** Redacted] (Harvard Case
[*** Redacted]), in the foreign patent applications corresponding
thereto, and in the inventions described and claimed therein.
2.2 HARVARD has the authority to issue license 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 an exclusive license in the TERRITORY
in order to practice the above-referenced in 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, an exclusive (except as set forth in
Sections 3.2(a) and 3.2(b) license 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 sale, import, export, or
*** 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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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 full right to
grant sublicenses, and 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 3.2 (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 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 status.
(b) 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).
(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] from the effective date of
this Agreement, HARVARD may render this 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
*** 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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(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 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 [***
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, during the period of
exclusivity of this license in the United States, 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.
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treatment filed with the Securities and Exchange Commission. Omitted portions
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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 [*** 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] dollars ($[*** Redacted]) upon execution of
this Agreement.
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]
([*** 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
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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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(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] ([*** 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 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
*** 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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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
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.
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").
*** 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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<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.
ARTICLE V
REPORTING
5.1 Within [*** Redacted] 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
[*** Redacted], LICENSEE shall provide to HARVARD a written annual
Progress Report describing progress on the commercialization of
PATENT RIGHTS during the most recent [*** Redacted] 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.
*** 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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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] or [*** 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;
(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.
*** 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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(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]
and [*** 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.
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 by 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.
*** 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 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 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. Such expenses total [*** Redacted] as of the most recent
invoice paid by HARVARD. Thereafter, LICENSEE shall reimburse HARVARD
for all such future expenses upon receipt of quarterly invoices from
HARVARD. 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. 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 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).
*** 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 VIII
INFRINGEMENT
8.1 With respect to any PATENT RIGHTS that have not been rendered
non-exclusive under Section 3.2(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 (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.
8.3 If LICENSEE elects to commence an action as described above, LICENSEE
may deduct from its [*** Redacted] 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 8.2(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 [*** 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.
8.4 Neither party may enter into a settlement, consent judgment or other
voluntary final disposition of any suit under Section 8.1, 8.6, 8.7 and
8.8 without the prior written consent of other party, which consent
shall not be unreasonably withheld, if such settlement, consent
judgment or other voluntary final disposition includes any admissions
or statements about the validity or enforceability of PATENT RIGHTS.
8.5 Recoveries or reimbursements from actions commenced pursuant to this
Article shall first be applied to reimburse LICENSEE and HARVARD for
litigation costs not paid from royalties [*** 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.
15
<PAGE>
pursuant to Section 8.3. Any remaining recoveries or reimbursements
shall be shared as follows: [*** Redacted]% to LICENSEE and [***
Redacted]% to HARVARD.
8.6 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.
8.7 Without limiting the generality of Section 8.6, 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 8.6 and 8.7, 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.
8.8 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.
8.9 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 one-half (1/2) of the
amounts 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 nonpayment (including the payment of interest in
accordance with Section 5.4(e)) within [*** Redacted] days
after the date of notice in writing of such non-payment by
HARVARD. If LICENSEE disputes the amount of such non-payment
in writing
*** 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.
16
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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.
9.4 LICENSEE may terminate this Agreement by giving [*** Redacted] days
advance written notice of termination to HARVARD. Upon termination,
LICENSEE shall promptly
*** 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.
17
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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,
(e) To the best knowledge of HARVARD, as of the Effective Date,
HARVARD does not own any rights in any other patent or patent
application, the claims of which would
*** 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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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 other 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 the 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 to the
disclosing party or (4) is independently developed by the
receiving party without use of the Confidential Information of
the disclosing party.
*** 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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(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 or 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 sole 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
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-
*** 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.
20
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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(b).
(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].
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 Agreements 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 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
*** 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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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
By such notice either party may change their address for future
notices.
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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 or
delayed shall be excused from the performance of any such obligation to
the extent and during the period of such prevention or delay.
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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.
PRESIDENT AND FELLOWS
OF HARVARD COLLEGE COMPANY
/s/ Joyce Brinton /s/ Lawrence A. Bock
--------------------------------------------- ---------------------------
Joyce Brinton, Director Signature
Office for Technology and Trademark Licensing
10/2/01 Lawrence A. Bock
------------ ---------------------------
Date Name
President and CEO
---------------------------
Title
10/3/01
-------------------
Date
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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.
25
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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 advisors (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.
26
<PAGE>
APPENDIX C
<CAPTION>
CASE LEAD INVENTOR REPORT DATE TITLE AGENCY GRANT NUMBERS
---- --------------- ----------- -------------------- ------------------------ ----------------
[***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.