License Agreement - Nanosys Inc. and University of California
LICENSE AGREEMENT
FOR
NANOCRYSTAL TECHNOLOGY
BETWEEN
NANOSYS, INC.
AND
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
THROUGH THE
ERNEST ORLANDO LAWRENCE
BERKELEY NATIONAL LABORATORY
<PAGE>
TABLE OF CONTENTS
1. Background............................................................. 1
2. Definitions............................................................ 1
3. License Grant.......................................................... 3
4. License Issue Fee...................................................... 4
5. Milestone Fee.......................................................... 4
6. Royalties and Payments................................................. 4
7. Performance Requirements............................................... 6
8. Progress and Royalty Reports........................................... 7
9. Books and Records...................................................... 8
10. Life of the Agreement.................................................. 8
11. Termination by Berkeley Lab............................................ 9
12. Termination by Licensee................................................ 9
13. Disposition of Licensed Products upon Termination...................... 9
14. Use Of Names and Nondisclosure of Agreement............................ 9
15. Limited Warranty....................................................... 10
16. Patenting and foreign rights........................................... 11
17. Patent Infringement.................................................... 12
18. Waiver................................................................. 12
19. Assignment............................................................. 13
20. Indemnification........................................................ 13
21. Late Payments.......................................................... 14
22. Notices................................................................ 14
23. U.S. Manufacture....................................................... 15
24. Patent Marking......................................................... 15
25. Government Approval or Registration.................................... 15
26. Export Control Laws.................................................... 15
27. Force Majeure.......................................................... 15
28. Miscellaneous.......................................................... 15
Exhibit 1 Licensed (Exclusive) Patents....................................... 17
Exhibit 2 Licensed (FOU Exclusive) Patents................................... 18
<PAGE>
LICENSE AGREEMENT FOR
NANOCRYSTAL TECHNOLOGY
This license agreement (the "Agreement") is entered into by The Regents of the
University of California, Department of Energy contract-operators of the Ernest
Orlando Lawrence Berkeley National Laboratory, 1 Cyclotron Road, Berkeley, CA
94720, ("Berkeley Lab"), and Nanosys, Inc., a Delaware corporation ("Licensee")
having its principal place of business at 2625 Hanover St., Palo Alto, CA 94304.
1. BACKGROUND
1.1. Certain inventions, generally characterized as nanocrystals and related
technology and covered by the Berkeley Lab cases listed herein, (the
"Invention"), were made in the course of research at Berkeley Lab by
Dr. Paul Alivisatos and colleagues under Berkeley Lab's contract with
the United States Department of Energy ("DOE").
1.2. As DOE sponsored development of the Invention, this Agreement and the
resulting license are subject to overriding obligations to the federal
government pursuant to the provisions of the applicable law or
regulations.
1.3. Berkeley Lab wants the Invention developed and used to the fullest
extent so that the general public enjoys the benefits of the
government-sponsored research.
1.4. Licensee wants to obtain certain rights from Berkeley Lab for the
commercial development, manufacture, use, and sale of the Invention.
1.5. Licensee is a "small business concern" as defined at Section 2 of
Public Law 85-536 (15 U.S.C. 632).
Therefore the parties agree as follows:
2. DEFINITIONS
2.1. "Effective Date" means November 9, 2002.
2.2. "Field of Use" [*** Redacted]
2.3. "Highly Inflationary Currency" means the currency of any economy with a
cumulative inflation rate of 100% or more over the most recent three
calendar years, as measured by consumer price indices published by the
International Monetary Fund (International Financial Statistics),
Washington, D.C.
*** 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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2.4. "Licensed (Exclusive) Patents" means Berkeley Lab's interest in any
subject matter claimed in or covered by any of the patents or patent
applications listed in Exhibit 1.
2.5. "Licensed (FOU Exclusive) Patents" means Berkeley Lab's interest in any
subject matter claimed in or covered by any of the patents or patent
applications listed in Exhibit 2.
2.6. "Licensed Patents" means Berkeley Lab's interest in any subject matter
claimed in or covered by any of the patents or patent applications
listed in Exhibits 1 or Exhibit 2, and any additional corresponding
foreign patent application or patent for which Licensee has met the
requirements of paragraph 16.4; any division, reexamination,
continuation, continuation-in-part (excluding new matter contained and
claimed in that continuation-in-part), or other application that is a
successor to any of the foregoing applications; any patents issuing on
any of the foregoing; and all renewals, reissues and extensions
thereof.
2.7. "Licensed Product" means any product, service or process that employs
or is produced by the practice of any invention claimed in any of
Licensed Patents or whose manufacture, use, practice, sale, offer for
sale, or importation would constitute, but for the license Berkeley Lab
grants to Licensee under this Agreement, an infringement of any Valid
Claim in Licensed Patents.
2.8. "Selling Price" [*** Redacted]
2.9. "Sublicensing Income" means amounts received by Licensee from a
non-affiliate third party in consideration for the right to make,
use, offer for sale, sell, or import Licensed Products, including
without limitation amounts received by way of license issue fees,
milestone payments, minimum annual royalties and royalties on the sale
or distribution of such Licensed Products. Notwithstanding the
foregoing, Sublicensing Income shall not include the following:
2.9.1. [*** Redacted]
2.9.2. [*** Redacted]
2.9.3. [*** Redacted]
2.9.4. [*** 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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2.10. "Valid Claim" means a claim within (a) an issued, unexpired patent that
Berkeley Lab has not disclaimed or otherwise admitted to the relevant
patent office or court to be invalid or otherwise unenforceable, and
has not been held invalid by a court of competent jurisdiction from
which no appeal has been or can be taken or (b) a patent application
that has not been pending more than 5 years, provided that Berkeley Lab
is pursuing such claim in a good faith belief in its patentability and
enforceability upon issuance of a patent containing such claim.
3. LICENSE GRANT
3.1. Subject to the limitations set forth in this Agreement, Berkeley Lab
grants to Licensee nontransferable, royalty-bearing licenses, under
Licensed Patents to make, have made, use, offer for sale, sell, and
import Licensed Products as follows:
3.1.1. limited exclusive for Licensed (Exclusive) Patents; and
3.1.2. limited exclusive and solely within the Field of Use for
Licensed (FOU Exclusive) Patents.
3.2. Any license under this Agreement is subject to the following: (a) DOE's
royalty-free license for federal government purposes only, and (b)
DOE's option to grant licenses either if reasonable steps to
commercialize the Invention are not carried out or in order to meet
federal regulations.
3.3. Berkeley Lab also grants to Licensee the right to issue, royalty-
bearing sublicenses only in the Field of Use to make, have made,
use, offer for sale, sell, and import Licensed Products, so long as
Licensee has current exclusive rights in the Field of Use for all
Licensed Patents covered by the sublicense.
3.4. Any sublicense Licensee grants must be consistent with all the rights
and obligations due Berkeley Lab and the United States Government under
this Agreement, including, without limitation, the license back to the
United States Government.
3.5. Licensee shall provide Berkeley Lab with a copy of each sublicense
issued under this Agreement; collect payment of all royalties and
payments due Berkeley Lab from sublicenses; and summarize and deliver
all reports due Berkeley Lab from sublicenses under Article 8 (PROGRESS
AND ROYALTY REPORTS). Sublicenses provided to Berkeley Lab under this
section may be provided in redacted form, provided that such redacted
sublicenses contain all terms necessary for Berkeley Lab to determine
Licensee's compliance with the obligations of this Agreement; and
provided further that upon request, Berkeley Lab's representatives can
review the sublicenses in their entirety at Licensee's facility.
3.6. If this Agreement terminates for any reason, Licensee will assign to
Berkeley Lab, and Berkeley Lab will honor any sublicenses granted
hereunder, to the extent that Berkeley Lab's duties under such
sublicenses are no greater than those arising under this Agreement.
3.7. Berkeley Lab expressly reserves the right to use the Invention and
associated technology for educational and research purposes.
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4. LICENSE ISSUE FEE
4.1. Licensee shall pay Berkeley Lab a license issue fee of [*** Redacted].
This license issue fee accrues on the Effective Date, and Licensee
shall pay [*** Redacted] of this fee within 30 days of the Effective
Date and [*** Redacted] within twelve months of the Effective Date.
4.2. This fee is [*** Redacted] and is [*** Redacted].
5. MILESTONE FEE
5.1. Following an initial public offering or series of public offerings of
Licensee securities which raises in the aggregate at least $5 million
or sale of all or substantially all of the assets or equity of Licensee
in a transaction(s) worth at least $5 million ("Offering"), Licensee
shall pay to Berkeley Lab the equivalent of the price at the Offering
of 60,000 shares of Licensee's common stock. Such payments shall be
made in installments with one-third payable 9 months from the Offering,
one-third payable 18 months from the Offering and one-third payable 26
months from the Offering. Such payments shall include interest from the
date of the Offering to the date such payment is made. Interest shall
be compounded on the date such payment is made, and shall be charged
at the prime lending rate as published in the Wall Street Journal on
the date such payment is made. Licensee shall adjust the 60,000 shares
to take into account any stock splits or reverse stock splits since the
Effective Date.
6. ROYALTIES AND PAYMENTS
6.1. Licensee shall pay to Berkeley Lab an earned royalty of [*** Redacted]
% of the Selling Price of each Licensed Product. In no event shall
more than one royalty apply to the sale of any given Licensed Product,
regardless of the number of Licensed Patents embodied therein.
6.2. [*** Redacted]
6.3. [*** Redacted]
6.4. If Licensee obtains a license from a third party(s) to a patent that
must otherwise be infringed by Licensee in order to make the Licensed
Products (" Third Party Patent") then Licensee may reduce the
[*** Redacted] royalty rate specified in paragraph 6.1 by an amount
equal to [*** Redacted] of the royalty Licensee pays the licensor of
such Third Party Patent, provided, however, in no case shall the
royalty rate paid to Berkeley Lab for Licensed Products be less than
[*** 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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6.5. For each sublicense, Licensee shall pay Berkeley Lab [*** Redacted]%
of Sublicensing Income. If Sublicensing Income arises under an
agreement in which both a Licensed Patent and one or more other patent,
patent application or copyrighted software program are licensed to a
third party by the Licensee, then the Licensee shall in good faith
allocate its total compensation under such agreement to either the
Licensed Patents or the other patent, patent application or copyrighted
software, and such portion allocated to the Licensed Patent(s) shall
constitute the Sublicensing Income; provided, however, that Licensee
shall (i) promptly notify Berkeley Lab of any such agreement for which
it intends to apportion the income; (ii) provide Berkeley Lab with a
copy of that agreement (if it has not already done so pursuant to
paragraph 3.5) together with a written report explaining its
apportionment for the Sublicensing Income; (iii) consider and respond
in good faith to Berkeley Lab's comments on the apportionment; and (iv)
pay Berkeley Lab no less than [*** Redacted]% of the total amounts
received by Licensee from the third party in consideration for a
sublicense for Licensed Patents.
6.6. Licensee shall pay to Berkeley Lab by [*** Redacted] of each year the
difference between the earned royalties for that calendar year Licensee
has already paid to Berkeley Lab and the minimum annual royalty set
forth in the following schedule. Berkeley Lab shall credit that minimum
annual royalty paid against the earned royalty due and owing for the
calendar year in which Licensee made the minimum payment.
<CAPTION>
Calendar Year Minimum Annual Royalty
------------- ----------------------
2002 $ [*** Redacted]
2003 $ [*** Redacted]
2004 $ [*** Redacted]
2005 $ [*** Redacted]
2006 $ [*** Redacted]
2007 $ [*** Redacted]
2008 $ [*** Redacted]
2009 and each year thereafter $ [*** Redacted]
6.7. Licensee shall send payment for royalties accruing to Berkeley Lab
[*** Redacted] together with its royalty report under paragraph 8.3.
6.8. Licensee shall make checks payable to "The Regents of the University of
California (Berkeley Lab/L-02-1364)." Licensee shall pay Berkeley Lab
only in United States dollars. If a Licensed Product is sold for
currency other than United States dollars (not including Highly
Inflationary Currency), Licensee shall first determine the earned
royalties in the foreign currency of the country in which the
Licensed Product was sold and then convert them into equivalent United
States dollars at the closing exchange rate published by The Wall
Street Journal on the last business day of the reporting period. If a
Licensed Product is sold for a Highly Inflationary Currency, Licensee
shall convert the sales subject to royalties into equivalent United
States funds using the closing exchange rates in effect on the date of
invoicing (or if no invoicing, of delivery) as published by The Wall
Street Journal. Licensee shall quote the exchange rate in the
Continental method (local currency per U.S. dollar).
6.9. Licensee may not reduce royalties payable by any taxes, fees, other
charges imposed on the remittance of royalty income. Licensee is also
responsible for all bank transfer charges.
6.10. If Licensee cannot promptly remit any royalties for sales in any
country where a Licensed Product is sold because of legal restrictions,
upon notice to Berkeley Lab, Licensee may deposit in United States
funds royalties due Berkeley Lab to Berkely Lab's account in a bank or
other depository in that country. If Licensee is not permitted to
deposit those payments
*** 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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in U.S. funds under the laws of that country, Licensee may deposit
those payments in the local currency to Berkeley Lab's account in a
bank or other depository in that country.
6.11. If a court of competent jurisdiction and last resort holds invalid any
patent or any of the patent claims within Licensed Patent in a final
decision from which no appeal has or can be taken, Licensee's
obligation to pay royalties based on that patent or claim will cease as
of the date of that final decision. Licensee, however, shall pay any
royalties that accrued before that decision or that are based on
another patent or claim not involved in that decision.
6.12. Licensee has no duty to pay Berkeley Lab royalties under this Agreement
on a Licensed Product Licensee sells to the United States Government
including any United States Government agency. Licensee shall reduce
the amount charged for a Licensed Product sold to the United States
Government by an amount equal to the royalty otherwise due Berkeley
Lab.
7. PERFORMANCE REQUIREMENTS
7.1. Licensee shall diligently proceed with the development, manufacture and
sale of Licensed Products and shall diligently endeavor to market them
within a reasonable time after the Effective Date in quantities
sufficient to meet the market demand.
7.2. Licensee shall make best efforts to obtain all necessary governmental
approvals for the manufacture, use and sale of Licensed Products.
7.3. Licensee is entitled to exercise prudent and reasonable business
judgment in meeting its performance requirements under this Agreement.
7.4. If Licensee is unable to perform any of the following, then Berkeley
Lab may either terminate this Agreement or reduce a limited exclusive
license to a nonexclusive license.
7.4.1. by [*** Redacted] from the Effective Date, develop a process
for the [*** Redacted] of [*** Redacted] and/or [*** Redacted]
for prototype development; such [*** Redacted] must be at
research quantities sufficient for prototype development of
the Licensed Product(s) specified in the Licensee's progress
reports submitted pursuant to paragraph 8.1, with
[*** Redacted], yielding material with [*** Redacted] and
[*** Redacted] of [*** Redacted];
7.4.2. by [*** Redacted] from the Effective Date, develop application
specific [*** Redacted] procedures for these materials,
including [*** Redacted] with [*** Redacted], [*** Redacted],
and [*** Redacted] and [*** Redacted];
7.4.3. by [*** Redacted] from the Effective Date, develop
[*** Redacted], which includes at least [*** Redacted], or
equivalent, e.g., [*** Redacted], [*** Redacted] etc., of
[*** Redacted] containing [*** Redacted] and/or [*** Redacted]
with [*** Redacted] and [*** Redacted] and [*** Redacted];
7.4.4. by [*** Redacted] from the Effective Date, perform and deliver
to Berkeley Lab a market assessment of major benefits of
Licensed Product materials versus existing commercial
approaches;
7.4.5. by [*** Redacted] from the Effective Date, develop a
[*** Redacted] for either [*** Redacted] or [*** Redacted] of
amounts of [*** Redacted] and/or [*** Redacted] that are
consistent with the Licensed Products identified as initial
products by the market assessment provided under paragraph
7.4.4;
*** 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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7.4.6. by [*** Redacted] from the Effective Date, develop initial
prototypes demonstrating [*** Redacted] functionality of [***
Redacted] and/or [*** Redacted] in Licensed Products, for
example, [*** Redacted] and [*** Redacted] and related
devices; for [*** Redacted], prototype devices with [***
Redacted] with [*** Redacted]; for [*** Redacted], [***
Redacted];
7.4.7. by [*** Redacted] from the Effective Date, develop and provide
to Berkeley Lab a technical and commercialization plan for
applications in [*** Redacted], for example, [*** Redacted]
and [*** Redacted];
7.4.8. by [*** Redacted] from the Effective Date, enter into a letter
of intent or other contract with an appropriate
commercialization partner for Licensed Products;
7.4.9. by [*** Redacted] from the Effective Date, make commercial
sales of Licensed Product; or
7.4.10. [*** Redacted], reasonably fill the market demand for Licensed
Products following commencement of commercial sales
7.5. Prior to termination of this Agreement or reduction of a limited
exclusive license to a nonexclusive license for failure to meet any of
the performance requirements set forth in paragraphs 7.4.1-7.4.10, or
as mutually agreed upon, Licensee and Berkeley Lab shall meet within
[*** Redacted] of Licensee's request to discuss Licensee's past and
planned efforts to meet such performance requirements. That meeting
shall take place at Berkeley Lab or other mutually agreed location, and
shall only be required if Licensee makes that request within
[*** Redacted] of Berkeley Lab's notice of termination or reduction to
nonexclusive license. To the extent that Licensee demonstrates it has
made reasonable efforts to meet such performance requirements, and by
mutual written consent, the parties shall amend or extend the
requirements of paragraphs 7.4.1 -7.4.10 at the written request of
Licensee in response to legitimate business or technical reasons.
8. PROGRESS AND ROYALTY REPORTS
8.1. Beginning [*** Redacted] and [*** Redacted] thereafter, Licensee shall
submit to Berkley Lab a progress report covering Licensee's activities
related to the development and testing of all Licensed Products and the
obtaining of the governmental approvals necessary for marketing.
Licensee shall make these progress reports until commercial sales of
the Licensed Product start.
8.2. The progress reports Licensee submits under paragraph 8.1 must include,
but not be limited to, the following topics:
8.2.1. summary of work completed related to the requirements of
paragraph 7.4;
8.2.2. key scientific discoveries;
8.2.3. summary of work in progress;
8.2.4. current schedule of anticipated milestones; and
8.2.5. market plans for introduction of Licensed Products; and
8.2.6. number of full-time equivalent employees or agents (FTEs)
working on the development of Licensed Products and overall
number of FTEs employed by Licensee.
8.3. Upon the earlier of [*** Redacted] after the Effective Date or after
the first commercial sale of a Licensed Product anywhere in the world,
Licensee shall make [*** Redacted] royalty reports to Berkeley Lab on
or before [*** Redacted] of each [*** 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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Each royalty report must cover the most recently completed
[*** Redacted] and must show for all sales (or other transfer in
accordance with paragraph 2.8):
8.3.1. the Selling Price of each type of Licensed Product sold by
Licensee;
8.3.2. the number of each type of Licensed Product sold;
8.3.3. the royalties, in U.S. dollars, payable under this
Agreement on those sales;
8.3.4. the exchange rates used in calculating the royalty due;
8.3.5. the royalties on government sales that otherwise would have
been due under paragraph 6.12; and
8.3.5. for each sublicense, if any:
(1) the sublicensee;
(2) the information set forth in paragraphs 8.3.1 to
8.3.5 for that sublicensee's sales or other
disposition of Licensed Product.
8.4. If no sales of Licensed Products have been made during any required
reporting period, Licensee shall make a statement to this effect.
9. BOOKS AND RECORDS
9.1. Licensee shall keep books and records accurately showing all Licensed
Products manufactured, used, sold, imported or otherwise disposed of
under the terms of this Agreement. Licensee shall preserve those books
and records for at least [*** Redacted] years, from the date of the
royalty payment to which they pertain and shall open them to inspection
by representatives or agents of Berkeley Lab at reasonable times.
9.2. Berkeley Lab shall bear the fees and expenses of Berkeley Lab's
representatives performing the examination of the books and records.
But if the representatives discover an error in underpaying royalties
to Berkeley Lab of more than [*** Redacted]% of the total royalties due
for any year, then Licensee shall bear the fees and expenses of these
representatives and the difference between the earned royalties and the
reported royalties (which shall be subject to the provisions of Article
21 (LATE PAYMENTS)).
10. LIFE OF THE AGREEMENT
10.1. Unless otherwise terminated by operation of law or by acts of the
parties in accordance with the terms of this Agreement, this Agreement
is in force from the Effective Date and expires concurrently with the
last-to-expire issued Licensed Patent.
10.2. Any termination of this Agreement shall not affect the rights and
obligations set forth in the following Articles:
Article 9 Books and Records
Article 13 Disposition of Licensed Products on Hand upon
Termination
Article 14 Use of Names and Trademarks and Confidentiality
Article 15 Limited Warranty
Article 20 Indemnification
Article 26 Export Control Laws
*** 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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10.3. Termination does not affect in any manner any rights of Berkeley Lab
arising under this Agreement before the termination.
11. TERMINATION BY BERKELEY LAB
11.1. Subject to paragraph 7.5, if Licensee violates or fails to perform any
material term of this Agreement, then Berkeley Lab may give written
notice of such default ("Default Notice") to Licensee. If Licensee
fails to cure that default and provide Berkeley Lab with reasonable
evidence of the cure within [*** Redacted] of the Default Notice,
Berkeley Lab may terminate this Agreement and the licenses granted by a
second written notice ("Termination Notice") to Licensee. If Berkeley
Lab sends a Termination Notice to Licensee, this Agreement
automatically terminates on the effective date of the Termination
Notice.
12. TERMINATION BY LICENSEE
12.1. Licensee at any time may terminate this Agreement in whole or as to any
portion of Licensed Patents by giving written notice to Berkeley Lab.
Licensee's termination notice must indicate whether Licensee has any
inventory of Licensed Products. Licensee's termination of this
Agreement will be effective [*** Redacted] after its notice.
13. DISPOSITION OF LICENSED PRODUCTS UPON TERMINATION
13.1. Within [*** Redacted] of termination of this Agreement for any reason,
Licensee shall provide Berkeley Lab with a written inventory of all
Licensed Products in process of manufacture or in stock. Licensee shall
dispose of those Licensed Products within [*** Redacted] of
termination. The sale of any Licensed Product within the [*** Redacted]
is subject to the terms of this Agreement.
14. USE OF NAMES AND CONFIDENTIALITY
14.1. In accordance with California Education Code Section 92000, Licensee
shall not use in advertising, publicity or other promotional activities
any name, trade name, trademark, or other designation of the University
of California, nor shall Licensee so use "Ernest Orlando Lawrence
Berkeley National Laboratory" or "Department of Energy" (including any
contraction, abbreviation, or simulation of any of the foregoing)
without Berkeley Lab's prior written consent.
14.2. Neither party may disclose the terms of this Agreement to a third party
without express written permission of the other party, except when
required under either the California Public Records Act or other
applicable law or court order. Notwithstanding the foregoing,
disclosures of the terms of this Agreement are permitted as follows:
14.2.1. as necessary for Licensee to secure financing through private
markets, engage in corporate partnership discussions, or
comply with applicable accounting requirements, or securities
laws or regulations, Licensee may disclose the terms of this
Agreement under a written confidentiality agreement with terms
as protective as those of this Article 14;
14.2.2. as necessary for Licensee to publicly disclose terms of this
Agreement in conjunction with a public financing or to comply
with applicable securities laws or regula-
*** 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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tions, after Licensee has provided Berkeley Lab with notice of
such disclosure with sufficient opportunity to seek redaction
of certain terms of the Agreement; and
14.2.3. Berkeley Lab may disclose the existence of this Agreement and
the extent of the grant in Article 3 (License Grant), but
shall not otherwise disclose the terms of this Agreement,
except to the DOE.
14.3 All information provided to Berkeley Lab by Licensee under this
agreement, including but not limited to information listed in Section
7.4 of this Agreement, e.g., sublicense agreements, technical reports,
development plans, marketing evaluations and reports, and royalty
reports, is deemed to be Confidential Information.
14.3.1 Berkeley Lab will maintain the confidentiality of the
Confidential Information and will not disclose the
Confidential Information to any third party, and will not use
the Confidential Information for any purpose other than as
necessary to administer this Agreement.
14.3.2 The obligations of Berkeley Lab with respect to Confidential
Information will not apply to information disclosed under this
agreement to the extent such information:
(a) is generally known to the public at the time of disclosure or
becomes generally known through no wrongful act on the part of
Berkeley Lab;
(b) is in Berkeley Lab's possession at the time of disclosure
other than as a result of prior disclosure by Licensee or a
breach of any legal obligation by Berkeley Lab or a third
party;
(c) becomes known to Berkeley Lab through disclosure by sources
other than Licensee having no duty of confidentiality to
Licensee, whether direct or indirect, with respect to such
information and having the legal right to disclose such
information;
(d) is independently developed by Berkeley Lab without reference
to or reliance upon the information as can be documented by
written records; or
(e) is required to be disclosed by Berkeley Lab to comply with
applicable laws or governmental regulations, provided that the
Berkeley Lab provides prior written notice of such disclosure
to the Licensee and takes reasonable and lawful actions to
avoid and/or minimize the extent of such disclosure.
14.3.3 The provisions of this Article 14 relating to confidentiality
shall be in force and effect until at least [*** Redacted]
following the termination of this Agreement.
15. LIMITED WARRANTY
15.1. Berkeley Lab warrants to Licensee that it has the lawful right to grant
this license.
15.2. This license and the associated Invention are provided WITHOUT WARRANTY
OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER
WARRANTY, EXPRESS OR IMPLIED. BERKELEY LAB MAKES NO REPRESENTATION
OR WARRANTY THAT LICENSED PRODUCTS WILL NOT INFRINGE ANY PATENT OR
OTHER PROPRIETARY RIGHT.
15.3. IN NO EVENT WILL BERKELEY LAB BE LIABLE FOR ANY INCIDENTAL, SPECIAL OR
CONSEQUENTIAL DAMAGES RESULTING FROM EXERCISE OF THIS LICENSE OR THE
USE OF THE INVENTION OR LICENSED PRODUCTS.
15.4. Nothing in this Agreement may be construed as:
*** 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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15.4.1. a warranty or representation by Berkeley Lab as to the
validity of Licensed Patents or scope of any of Berkeley Lab's
rights in Licensed Patents;
15.4.2. a warranty or representation that anything made, used, sold or
otherwise disposed of under any license granted in this
Agreement is or will be free from infringement of any patents
other than Licensed Patents;
15.4.3. an obligation to bring or prosecute actions or suits against
third parties for patent infringement, except as specifically
provided for in Article 17 (Patent Infringement); or
15.4.4. a grant by implication, estoppel or otherwise of any license
or rights under any patents of Berkeley Lab other than
Licensed Patents, regardless of whether such patents are
dominant or subordinate to Licensed Patents;
15.4.5. an obligation to furnish any know-how not provided in Licensed
Patents.
16. PATENTING AND FOREIGN RIGHTS
16.1. Berkeley Lab shall prepare, file, prosecute and maintain patent
applications and patents relating to inventions included in the
Licensed Patents using patent counsel of its choice, and shall consult
and cooperate with Licensee in connection therewith. Berkeley Lab shall
copy Licensee promptly on all U.S.P.T.O. and foreign patent office
actions, final drafts of proposed submissions and copies of actual
submissions, to the extent reasonably practicable, so that Licensee
shall be informed of the continuing prosecution, and have an
opportunity to review and comment on such office actions and draft
submissions. Notwithstanding the foregoing, Berkeley Lab may take any
action useful or necessary to obtain and preserve its patent rights in
Licensed Patents. Berkeley Lab shall use all reasonable efforts to
amend any patent application to include claims and/or legal arguments
reasonably requested by Licensee to protect the Licensed Products
Licensee contemplates selling. Licensee shall keep confidential
documents from patent offices and patent related filings and
associated drafts.
16.2. licensee agrees to reimburse Berkeley Lab for Berkeley Lab's
out-of-pocket patent preparation, filing, prosecution and maintenance
costs as follows:
16.2.1. [*** Redacted]% of all such costs for Licensed (Exclusive)
Patents; and
16.2.2. [*** Redacted]% of all such costs for Licensed (FOU Exclusive)
Patents.
16.3. Berkeley Lab shall provide Licensee with documentation of patenting
costs incurred when invoicing Licensee for those costs. Licensee shall
pay Berkeley Lab within [*** Redacted] of receiving the invoice.
Licensee shall also pay Berkeley Lab for reimbursement of such patent
costs incurred prior to the Effective Date within [*** Redacted] of
invoicing; such costs are estimated to be approximately [*** Redacted].
Licensee's obligation to reimburse patent costs continues for so long
as this Agreement remains in effect, provided, however, that Licensee
may terminate its obligations under this Agreement with respect to any
given patent application or patent upon [*** Redacted] written notice
to Berkeley Lab. Berkeley Lab shall use reasonable efforts to curtail
patent costs when such a notice is received from Licensee. After such
notice or when this Agreement terminates, Berkeley Lab may continue
prosecution and/or maintenance of those application(s) or patent(s) at
its sole discretion and expense; provided, however, that Licensee will
have no further license or other right to them.
16.4. Licensee may request that Berkeley Lab seek patent protection on the
Licensed Patents in foreign countries if available. Berkeley Lab has no
obligation to take action to file foreign patent applications unless
Licensee provides written notice to Berkeley Lab at least [***
Redacted] before any applicable bar and that notice states which
countries, regions or Patent
*** 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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Cooperation Treaty filing Licensee desires. If Licensee timely provides
such notice, then Berkeley Lab shall timely make such foreign filings.
The absence of the required notice from Licensee to Berkeley Lab acts
as an election not to secure foreign rights.
16.5. Berkeley Lab may file patent applications at its own expense in any
country in which Licensee has not elected to secure patent rights.
Those applications and resultant patents shall not be subject to this
Agreement.
16.6. Licensee shall promptly notify Berkeley Lab of any change in its status
as a small business concern and of the first sublicense granted to an
entity that does not qualify as a small business concern. A "small
business concern" as used in this paragraph is as defined by the U.S.
Patent and Trademark Office; currently, that is a company whose number
of employees, including affiliates, does not exceed 500 persons (13
C.F.R. 121.802).
17. PATENT INFRINGEMENT
17.1. If Licensee learns of the substantial infringement of any of Licensed
Patents, Licensee shall so inform Berkeley Lab in writing and shall
provide Berkeley Lab with reasonable evidence of the infringement.
During the period and in a jurisdiction where Licensee has exclusive
rights under this Agreement, neither party may notify a third party of
the infringement of any of Licensed Patents without first obtaining
written consent of the other party, which consent shall not be
unreasonably denied. Both parties shall use their best efforts in
cooperation with each other to terminate such infringement without
litigation.
17.2. Licensee may request that Berkeley Lab take legal action against the
infringement of Licensed (Exclusive) Patents or Licensed (FOU
Exclusive) Patents in the Field of Use in which Licensee has current
exclusive rights under this Agreement. Licensee shall make that request
in writing and include reasonable evidence of the infringement and
damages to Licensee. If the infringing activity has not been abated
within [*** Redacted] of that request, Berkeley Lab may elect to: (a)
commence suit on its own account; or (b) refuse to participate in the
suit. Berkeley Lab shall give written notice of its election to
Licensee by the end of the [*** Redacted] after receiving notice of the
request from Licensee. Licensee may thereafter bring suit for patent
infringement only if Berkeley Lab elects not to commence suit and if
the infringement occurred during the period and in a jurisdiction where
Licensee has exclusive rights under this Agreement. If, however,
Licensee elects to bring suit in accordance with this paragraph,
Berkeley Lab may thereafter join such suit at its own expense.
17.3. Such legal action as is decided upon must be at the expense of the
party on account of whom suit is brought and all consequent recoveries
belong to that party. But if Berkeley Lab and Licensee jointly bring
legal action and fully participate in it, the parties must jointly
share both the expense and all recoveries in proportion to the share of
expense each party pays.
17.4. Each party shall cooperate with the other in litigation proceedings
instituted under this Agreement but at the expense of the party on
account of whom suit is brought. The party bringing the suit will
control that litigation, except that Berkeley Lab may elect to be
represented by counsel of its choice in any suit brought by Licensee.
18. WAIVER
18.1. The waiver of any breach of any term of this Agreement does not waive
any other breach of that or any other term.
*** 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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19. ASSIGNMENT
19.1. This Agreement is binding upon and shall inure to the benefit of
Berkeley Lab, its successors and assigns. Upon written notice to
Berkeley Lab, Licensee may assign this Agreement to a Licensee wholly
owned subsidiary, or in conjunction with a sale of all or substantially
all of the assets of Licensee. Any other attempt by Licensee to assign
this Agreement is void unless Licensee obtains the prior written
consent of Berkeley Lab; Berkeley Lab shall not unreasonably withhold
that consent.
20. INDEMNIFICATION
20.1. Licensee agrees to indemnify, hold harmless and defend Berkeley Lab and
the U.S. Government and their officers, employees, and agents; the
sponsors of the research that led to the Invention; and the inventors
of the patents and patent applications in Licensed Patents and their
employers against any and all claims, suits, losses, damage, costs,
fees, and expenses resulting from or arising out of exercise of this
license or any sublicense, except to the extent indemnification of
Berkeley Lab is due to the gross negligence of Berkeley Lab. Licensee
shall pay all costs incurred by Berkeley Lab in enforcing this
indemnification, including reasonable attorney fees. The indemnity set
forth herein shall apply only if Licensee shall have been given an
opportunity, to the maximum extent afforded by applicable laws, rules,
or regulations, to participate in and control its defense. No
settlement for which Licensee would be responsible shall be made
without Licensee's consent unless required by final decree of a court
of competent jurisdiction.
20.2. Licensee, at its sole expense, shall insure its activities in
connection with the work under this Agreement and obtain and keep in
force Comprehensive or Commercial Form General Liability Insurance
(contractual liability and products liability included) with limits as
follows:
20.2.1. Each Occurrence $[*** Redacted]
20.2.2. Products/Completed Operations Aggregate $[*** Redacted]
20.2.3. Personal and Advertising Injury $[*** Redacted]
20.2.4. General Aggregate (commercial form only) $[*** Redacted]
20.3. The coverages and limits referred to in this Article 20 do not in any
way limit the liability of Licensee. Licensee shall furnish Berkeley
Lab with certificates of insurance, including renewals, evidencing
compliance with all requirements at least [*** Redacted] prior to the
first commercial sale, use, practice or distribution of a Licensed
Product.
20.3.1. If such insurance is written on a claims-made form, coverage
shall provide for a retroactive date of placement on or
before the Effective Date.
20.3.2. Licensee shall maintain the general liability insurance
specified during: (a) the period that the Licensed
Product is being commercially distributed or sold by Licensee
or by a sublicensee or agent of Licensee, and (b) a reasonable
period thereafter, but in no event less than [*** Redacted].
20.4. The insurance coverage of paragraph 20.2 must:
20.4.1. Provide for [*** Redacted] advance written notice to Berkeley
Lab of cancellation or of any modification.
20.4.2. Indicate that DOE, "The Regents of the University of
California" and its officers, employees, students, agents, are
endorsed as additional insureds.
*** 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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20.4.3. Include a provision that the coverages are primary and do not
participate with, nor are excess over, any valid and
collectible insurance or program of self-insurance carried or
maintained by Berkeley Lab.
21. LATE PAYMENTS
21.1 If Licensee does not make a payment to Berkeley Lab when due, Licensee
shall pay to Berkeley Lab such reasonable administrative fees and
interest as Berkeley Lab generally charges third parties on overdue
accounts.
22. NOTICES
22.1. Any payment, notice or other communication this Agreement requires or
permits either party to give must be in writing to the appropriate
address given below, or to such other address as one party designates
by written notice to the other party. The parties deem payment, notice
or other communication to have been properly given and to be effective
(a) on the date of delivery if delivered in person; (b) on the fourth
day after mailing if mailed by first-class mail, postage paid; (c) on
the second day after delivery to an overnight courier service such as
Federal Express, if sent by such a service; or (d) upon confirmed
transmission by telecopier. The parties' addresses are as follows:
For Berkeley Lab:
Lawrence Berkeley National Laboratory
Technology Transfer Department
Mailstop 90-1070
One Cyclotron Road
Berkeley, California 94720
Attention: Licensing Manager
Fax: 510/486-6457
Telephone: 510/486-6467
e-mail: viwolinsky@lbl.gov
For Licensee:
Nanosys, Inc.
2625 Hanover St.
Palo Alto, Ca 94304
Attention: Larry Bock, CEO
Fax: 650/ 846-2501
Telephone: 650/ 846-2500
e-mail: lbock@nanosysinc.com
With a copy to:
Michael O' Donnell, Esq.
Wilson, Sonsini, Goodrich and Rosati
650 Page Mill Road
Palo Alto, CA 94304
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23. U.S. MANUFACTURE
23.1. Licensee shall have Licensed Products produced for sale in the United
States manufactured substantially in the United States so long as
Licensee has current exclusive rights in the Field of Use.
24. PATENT MARKING
24.1. Licensee shall mark all Licensed Products made, used or sold under this
Agreement, or their containers, in accordance with the applicable
patent marking laws and to the extent reasonably practicable.
25. GOVERNMENT APPROVAL OR REGISTRATION
25.1. If the law of any nation requires that any governmental agency either
approve or register this Agreement or any associated transaction,
Licensee shall assume all legal obligation to do so. Licensee shall
notify Berkeley Lab if it becomes aware that this Agreement is subject
to a U.S. or foreign government reporting or approval requirement.
Licensee shall make all necessary filings and pay all costs, including
fees, penalties, and all other costs associated with such reporting or
approval process.
26. EXPORT CONTROL LAWS
26.1. Licensee shall observe all applicable United States and foreign laws
and regulations with respect to the transfer of Licensed Products and
related technical data, including, without limitation, the
International Traffic in Arms Regulations (ITAR) and the Export
Administration Regulations.
27. FORCE MAJEURE
27.1. If a party's performance required under this Agreement is rendered
impossible or unfeasible due to any catastrophes or other major events
beyond its reasonable control, including, without limitation, the
following, the parties are excused from performance: war, riot, and
insurrection; laws, proclamations, edicts, ordinances or regulations;
strikes, lockouts or other serious labor disputes; and floods, fires,
explosions, or other natural disasters. When such events abate, the
parties' respective obligations under this Agreement must resume.
28. MISCELLANEOUS
28.1. The headings of the several sections are inserted for convenience of
reference only and are not intended to be a part of or to affect the
meaning or interpretation of this Agreement.
28.2. This Agreement is not binding upon the parties until it is signed below
on behalf of each party.
28.3. No amendment or modification hereof shall be valid or binding upon the
parties unless made in writing and signed on behalf of each party.
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28.4. This Agreement embodies the entire and final understanding of the
parties on this subject. It supersedes any previous representations,
agreements, or understandings, whether oral or written.
28.5. If a court of competent jurisdiction holds any provision of this
Agreement invalid, illegal or unenforceable in any respect, this
Agreement must be construed as if that invalid or illegal or
unenforceable provision is severed from the Agreement, provided,
however, that the parties shall negotiate in good faith substitute
enforceable provisions that most nearly effect the parties' intent in
entering into this Agreement.
28.6. This Agreement must be interpreted under California law, without giving
effect to any choice of law rules that would result in the application
of laws of any jurisdiction other than California.
Berkeley Lab and Licensee execute this Agreement in duplicate originals through
their duly authorized respective officers in one or more counterparts, that
taken together, are but one instrument.
THE REGENTS OF THE UNIVERSITY OF NANOSYS, INC.
CALIFORNIA, THROUGH THE ERNEST
ORLANDO LAWRENCE BERKELEY NATIONAL
LABORATORY
By /s/ Piermaria Oddone By /s/ Lawrence Bock
--------------------------------- -----------------------------
(Signature) (Signature)
By Piermaria Oddone By Lawrence Bock
(Please Print)
Title Deputy Laboratory Director Title President
Date 10/11/02 Date 10/15/02
Approved as to form
/s/ Glenn R. Woods
---------------------------
GLENN R. WOODS
LAWRENCE BERKELEY NATIONAL LABORATORY
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EXHIBIT 1
LICENSED (EXCLUSIVE) PATENTS
BERKELEY LAB
CASE NUMBER PATENT APPLICATION/ PATENT
[*** 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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EXHIBIT 2
LICENSED (FOU EXCLUSIVE) PATENTS
BERKELEY LAB
CASE NUMBER PATENT APPLICATION/ PATENT
[*** 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]
------------------------
* If Berkeley Lab within [*** Redacted] from the Effective Date has not licensed
to any third party the exclusions to the Field of Use for these Berkeley Lab
case numbers [*** Redacted] and [*** Redacted] nor provided written notice to
Licensee that Berkeley Lab is in the process of doing so, then such cases shall
automatically become Licensed (Exclusive) Patents.
*** 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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