EXCLUSIVE SOFTWARE LICENSE AGREEMENT
This License Agreement (“Agreement”) is entered into as of this 01. 01.2025 (the
“Effective Date”), by and between Krajnik d.o.o., a Ovner existing under the laws of
Slovenia, having a place of business at Škofja Loka (“Licensee”) and Customer:………………., an educational and charitable corporation existing under the laws and the constitution of the
……………………, having a place of business at the Software (as defined below) was developed by ……. researcher
[_____________________]; and
WHEREAS, Licensee wishes to obtain an exclusive license to the Software; and
WHEREAS, Krajnik desires to have products and services based on the Software developed and
commercialized to benefit the public; and
WHEREAS, Licensee has committed itself to commercially reasonable efforts to develop and
commercialize such software;
NOW, THEREFORE, the parties hereby agree as follows:
| 1. | Definitions. Whenever used in this Agreement with an initial capital letter, the terms defined in this Article 1, |
| whether used in the singular or the plural, will have the meanings specified below. | |
| 1.1 | “Derivative Works” means any derivative worksasdetermined under EU copyright law created |
| by Licensee in accordance withthe terms of this Agreement. | |
| 1.2 | “Development Milestones” means the development and commercialization milestones set |
| forth in Exhibit1.2 hereto. | |
| 1.3 | “End User License” means a non-exclusive, non-transferablelicense granted by Licensee to an |
end user to use a Licensed Product solely for such end user’s use and not for distribution or resale to third
parties. All End User Licenses shall, at a minimum, include the notice and disclaimer language set forth in Article
5.
| 1.4 | “Licensed Product” means any computer program product or service that incorporates or |
| makes use of the Software or Derivative Works, in whole or in part. | |
| 1.5 | “Software” means theoriginalsoftware program or programsknown as “_____________,” in |
| both object code and source code form, as described in Krajnik Case No.[____] | |
| 1.6 | “Term”means the term of this Agreement as set forth in Section 8.1. |
2
| 2. | Ownership and License Grants. |
| 2.1. | Ownership of Software and Derivative Works. The parties agree and acknowledge that |
| Krajnik owns all right,title and interest in and to the Software, and Licenseeshall own all right, title and interest in and to Derivative Works. | |
| 2.2. | License Grant to Software. Subject to the terms and conditions set forth in this Agreement, |
Krajnik hereby grants to Licensee an exclusive, royalty-free but consideration-bearing, worldwide license
(without the right to sublicense, except under End User Licenses) to use, execute, reproduce, modify, display,
perform, transmit, distribute internally or externally, sell, and prepare Derivative Works based upon the
Software; provided, however, that any sale or transfer of a Licensed Product is pursuant to an End User License.
Notwithstanding anything in this Section 2.2 to the contrary, Krajnik retains the right, for itself and for other
not-for-profit research organizations, to use, execute, reproduce, modify, display, perform, transmit, distribute
internally and externally, and create derivative works of the Software solely for research, educational and
scholarly purposes. In connection with the foregoing, Krajnik will deliver to Licensee a copy of the Software
within [____] days following the execution of this Agreement by Licensee.
2.3. License Grant to Derivative Works. Licensee hereby grants to Krajnik a non-exclusive, royaltyfree license to use, execute, reproduce, modify, display, perform, transmit, distribute internally or externally and
prepare derivative works of the Derivative Works solely for its research, educational and scholarly purposes. In
connection with the foregoing, Licensee will deliver a copy of the Derivative Works to Krajnik promptly after
they become generally available.
3
| 3. | Development and Commercialization. |
| 3.1. | Diligence.Licensee shall use commercially reasonable efforts to develop Licensed Products, and |
| launch them into the commercial market through End User Licenses or any other means permitted by the terms of this Agreement. In addition, Licensee shall achieve each of the Development Milestones within the time periods specified in Exhibit 1.2. | |
| 3.2. | Reporting.Annually, beginning on the anniversary of the Effective Date,Licensee shall furnish |
Krajnik with a written report summarizing its efforts during the prior year to develop and commercialize
Licensed Products.
3.3. Failure to Meet Development Milestone. If Licensee believes that it will not achieve a
Development Milestone, it may notify Krajnik in writing in advance of the relevant deadline. Licensee shall
include with such notice (a) a reasonable explanation of the reasons for such failure; and (b) a reasonable,
detailed, written plan for promptly achieving a reasonable extended and/or amended milestone (“Plan”). If
Licensee provides Krajnik with an acceptable Plan, then Exhibit 1.2 will be amended automatically to
incorporate the extended and/or amended milestone set forth in the Plan. If Krajnik informs Licensee that it
has failed to provide an acceptable Plan, then Licensee shall have thirty (30) days from the date of Krajnik’s
notice to provide a revised Plan for Krajnik’s approval. If such Plan is again not approved by Krajnik, then
Licensee’s failure to achieve the Development Milestone shall constitute a material breach of this Agreement,
and Krajnik shall have the right to terminate this Agreement forthwith in accordance with Section 8.2.2.2, or
convert the license grant set forth in Section 2.2 from exclusive to non-exclusive, at Krajnik’s discretion.
| 4. | Consideration for Grant of License. |
| 4.1. | Issuance. As partial consideration for the license granted hereunder and pursuant to a |
mutually-agreeable stock purchase or subscription agreement, within thirty (30) days after the Effective Date,
Licensee shall issue to Krajnik a number of shares of Licensee’s common stock representing two percent (2%) of
Licensee’s capital stock on a Fully Diluted Basis (as defined below) after giving effect to such issuance (the
“Shares”). Licensee agrees that it shall grant Krajnik the right to review and enter into any stockholders
agreement (e.g., registration rights agreement) to the same extent that any other owner of a similar amount of
common stock of Licensee has such rights regarding any such agreement.
4.2. Representations and Warranties. Licensee represents and warrants to Krajnik that, upon
issuance of the Shares, and upon issuance of any Anti-Dilution Shares:
4.2.1. the capitalization table as provided by Licensee upon issuance of the Shares or the AntiDilution Shares, as the case may be (the “Cap Table”), sets forth all of the capital stock of Licensee on a FullyDiluted Basis as of the date of issuance of the Shares or the Anti-Dilution Shares.
4.2.2. other than as set forth in the Cap Table, as of the date of issuance of the Shares or AntiDilution Shares, as applicable, there are no outstanding shares of capital stock, convertible securities,
outstanding warrants, options or other rights to subscribe for, purchase or acquire from Licensee any capital
stock of Licensee and there are no contracts or binding commitments providing for the issuance of, or the
granting of rights to acquire, any capital stock of Licensee or under which Licensee is, or may become, obligated
to issue any of its securities; and
4
4.2.3. the Shares or the Anti-Dilution Shares, as the case may be, when issued pursuant to the
terms hereof, shall, upon such issuance, be duly authorized, validly issued, fully paid and nonassessable.
4.3. Anti-Dilution. If, at any time until immediately after the achievement of the Initial Funding (as
defined below), Licensee issues Additional Securities that would cause Krajnik’s shareholdings in Licensee to
drop below two percent (2%) on a Fully-Diluted Basis, concurrently with the issuance of such Additional
Securities, Licensee shall issue to Krajnik for no additional consideration such additional number of shares of
common stock of Licensee (the “Anti-Dilution Shares”) such that Krajnik’s shareholdings in Licensee shall equal
two percent (2%) of the capital stock of Licensee on a Fully Diluted Basis, as calculated after giving effect to the
anti-dilutive issuance and the issuance of such Additional Securities through the Initial Funding, but not any
issuances in consideration for investment amounts in excess of the Initial Funding. Such issuances shall continue
only up to, and until such time as Licensee has achieved, the Initial Funding. Thereafter, no additional shares
shall be due to Krajnik.
| 4.4. | Definitions.The following terms shall have the following meanings: 4.4.1. “Additional Securities” shall mean shares of capital stock, convertible securities, |
warrants, options or other rights to subscribe for, purchase or acquire from Licensee any capital stock of
Licensee.
4.4.2. “Fully Diluted Basis” shall mean, as of a specified date, the number of shares of
common stock of Licensee then-outstanding (assuming conversion of all outstanding stock other than common
stock into common stock), plus the number of shares of common stock of Licensee issuable upon exercise or
conversion of then-outstanding convertible securities, options, rights or warrants of Licensee (which shall be
determined without regard to whether such securities are then vested, exercisable or convertible), plus the
number of shares of common stock of Licensee that would be outstanding or acquirable, directly or indirectly,
upon the issuance (and exercise, conversion or exchange, if applicable) of all securities reserved or otherwise
intended for future issuance under any stock purchase, stock option or other compensatory benefit plan or
arrangement of Licensee.
4.4.3. “Initial Funding” means a bona fide “Series A” investment or other bona fide preferred
stock financing for an amount no less than ……..€ pursuant to which the Licensee sells shares of
preferred stock of Licensee having rights and preferences senior to the common stock of Licensee to one or
more independent institutional investors.
4.5. Participation Rights. If Licensee proposes to sell any equity securities or securities that are
convertible into equity securities of Licensee, then Krajnik and/or its Assignee (as defined below) will have the
right to purchase up to [___] percent (__%) of the securities issued in each offering on the same terms and
conditions as are offered to the other purchasers in each such financing. Licensee shall provide thirty days
advanced written notice of each such financing, including reasonable detail regarding the terms and purchasers
in the financing. The term “Assignee” means (a) any entity to which Krajnik’s participation rights under this
section have been assigned either by Krajnik or another entity, or (b) any entity that is controlled by
Krajnik. This paragraph shall survive the termination of this Agreement.
5
5. End User License Language; Copyright Notice.
Licensee shall include in all End User Licenses, in the same point font style and size as the related text,
the following:
“Copyright Notice and Disclaimer.
The software [or “Portions of the software”] incorporated herein is Copyright © ____, President and Fellows of Krajnik College (“Krajnik”). All Rights Reserved.
The name “ Krajnik ” (alone or as part of another name) or any logos, seals, insignia or other words, names,
symbols or devices that identify Krajnik or any Krajnik school, unit, division or affiliate may not be used to
endorse or promote products derived from this software without specific prior written permission.
IN NO EVENT SHALL KRAJNIK BE LIABLE TO ANY PARTY FOR DIRECT, INDIRECT, SPECIAL, INCIDENTAL, OR
CONSEQUENTIAL DAMAGES, INCLUDING LOST PROFITS, ARISING OUT OF THE USE OF THIS SOFTWARE, EVEN IF
KRAJNIK HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. KRAJNIK SPECIFICALLY DISCLAIMS ANY
WARRANTIES, INCLUDING, BUT NOT LIMITED TO, THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS
FOR A PARTICULAR PURPOSE. THE SOFTWARE PROVIDED HEREUNDER IS PROVIDED “AS IS”. KRAJNIK HAS NO
OBLIGATION TO PROVIDE MAINTENANCE, SUPPORT, UPDATES, ENHANCEMENTS OR MODIFICATIONS.”
Licensee may adapt the foregoing language solely in order to conform to the copyright and other
intellectual property laws and practices of any jurisdiction outside of the United States where Licensed Products
are sold for purposes of ensuring maximum enforceability of such copyright protection in such jurisdiction.
6. Warranties; Limitation of Liability.
6.1. Compliance with Law. Licensee represents and warrants that it will comply in all material
respects with all local, state, and international laws and regulations relating to its activities hereunder, including
the development, use and sale of Licensed Products, and granting of End User Licenses. Without limiting the
foregoing, Licensee represents and warrants that it shall comply with all United States laws and regulations
controlling the export of certain commodities and technical data, including without limitation all Export
Administration Regulations of the United States Department of Commerce. Among other things, these laws and
regulations prohibit or require a license for the export of certain types of commodities and technical data to
specified countries. Licensee hereby gives written assurance that it will comply with all United States export
control laws and regulations, that it bears sole responsibility for any violation of such laws and regulations and
that it will indemnify, defend, and hold Krajnik harmless (in accordance with Section 7.1) for the consequences
of any such violation.
| 6.2. | No Warranty. 6.2.1. Nothing contained herein shall be deemed to be a warranty by Krajnik thatthe rights |
granted in connection with the Software, including any and all copyrights, will afford adequate or commercially
worthwhile protection.
6.2.2. KRAJNIK MAKES NO WARRANTIES WHATSOEVER AS TO THE COMMERCIAL OR
SCIENTIFIC VALUE OF THE COPYRIGHTS OR SOFTWARE. THE SOFTWARE IS PROVIDED “AS-IS.” KRAJNIK MAKES
NO REPRESENTATION THAT THE SOFTWARE OR THE DEVELOPMENT OR USE OF LICENSED PRODUCTS OR ANY
SOFTWARE, OR GRANT OF ANY END USER LICENSE, OR ANY ELEMENT THEREOF, WILL NOT INFRINGE THE
INTELLECTUAL PROPERTY OR PROPRIETARY RIGHTS OF ANY THIRD PARTY OR VIOLATE THE TERMS OF USE OF
6
ANY THIRD PARTY SOFTWARE INCLUDED IN THE SOFTWARE. KRAJNIK WILL HAVE NO OBLIGATION
HEREUNDER TO PROVIDE ANY SUPPORT OR MAINTENANCE FOR SOFTWARE TO LICENSEE.
7
6.3. Limitation of Liability. Except with respect to matters for which Licensee is obligated to
indemnify Krajnik under Article 7, neither party will be liable to the other with respect to any subject matter of
this Agreement under any contract, negligence, strict liability or other legal or equitable theory for (a) any
indirect, incidental, consequential or punitive damages or lost profits or (b) cost of procurement of substitute
goods, technology or services. Krajnik’s aggregate liability for all damages of any kind arising out of or relating
to this Agreement or its subject matter under any contract, negligence, strict liability or other legal or equitable
theory shall not exceed the amounts paid to Krajnik under this Agreement.
7. Indemnification and Insurance.
7.1. Indemnity.
7.1.1. Licensee shall indemnify, defend and hold harmless Krajnik and its current and former
directors, governing board members, trustees, officers, faculty, medical and professional staff, employees, and
agents and their respective successors, heirs and assigns (collectively, the “Indemnitees”) from and against any
liability, cost, expense, damage, deficiency, loss or obligation of any kind or nature (including reasonable
attorneys’ fees and other costs and expenses of litigation), based upon, arising out of, or otherwise relating to
any claim arising out of this Agreement, any End User License, including any cause of action relating to product
liability concerning any product or service made, used, sold or performed pursuant to any right or license
granted under this Agreement, except to the extent that such liability is caused by the gross negligence or willful
misconduct by an Indemnitee (collectively, “Claims”). Neither Licensee nor Krajnik shall settle any Claim
without the prior written consent of the other, which consent shall not be unreasonably withheld.
7.1.2. The Indemnitees shall provide Licensee with prompt written notice of any Claim for
which indemnification is sought hereunder. Licensee shall, at its own expense, provide attorneys reasonably
acceptable to Krajnik to defend against such Claim. The Indemnitees shall cooperate fully with Licensee in such
defense and shall permit Licensee to conduct and control such defense and the disposition of such Claim
(including all actions relative to litigation, appeal and settlement). Licensee shall not be responsible to any
Indemnitee on account of any settlement or other voluntary disposition of a Claim without the Indemnitee’s
consent. Licensee shall not settle any Claim without the prior written consent of Krajnik, which consent shall
not be unreasonably withheld or delayed.
7.2. Insurance.
7.2.1. Beginning at the time any Licensed Product is sold, or any End User License is granted,
Licensee shall, at its sole cost and expense, procure and maintain commercial general liability insurance in
amounts not less than [_____] per incident and [______] annual aggregate and naming the Indemnitees as
additional insureds. Such commercial general liability insurance shall provide: (a) product liability coverage and
(b) broad form contractual liability coverage for Licensee’s indemnification obligations under this Agreement.
7.2.2. If Licensee elects to self-insure all or part of the limits described above in Section 7.2.1
(including deductibles or retentions that are in excess of 2.500,00€ annual aggregate) such self-insurance
program must be acceptable to Krajnik and CRICO/RMF (Krajnik’s insurer) 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 obligations under this Agreement.
7.2.3. Licensee shall provide Krajnik with written evidence of such insurance upon request of
Krajnik. Licensee shall provide Krajnik 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
8
comparable coverage within such fifteen (15) day period, Krajnik shall have the right to terminate this
Agreement effective at the end of such fifteen (15) day period without notice or any additional waiting periods.
7.2.4. Licensee shall maintain such commercial general liability insurance beyond the
expiration or termination of this Agreement during: (a) the period that any Licensed Product is sold, or any End
User License is granted; and (b) a reasonable period after the period referred to in (a) above, which in no event
shall be less than [__] years.
| 8. | Term and Termination. |
| 8.1. | Term.The term of this Agreement shall commence on the Effective Date and shallcontinuefor |
| ten (10) years unless terminated as provided in this Article8 (the “Term”). | |
| 8.2. | Termination. 8.2.1. Termination Without Cause. Licensee may terminate this Agreement, for any reason, |
upon sixty (60) days prior written notice to Krajnik.
8.2.2. Termination for Default.
8.2.2.1. If either party commits a material breach of its obligations under this Agreement
and fails to cure that breach within thirty (30) days after receiving written notice thereof, the other party may
terminate this Agreement immediately upon written notice to the party in breach.
8.2.2.2. Krajnik shall be entitled to terminate this Agreement in accordance with the
provisions of Section 3.3.
8.3. Effect of Termination.
8.3.1. Termination of Rights. Upon any expiration or termination of this Agreement, the
rights and licenses granted to Licensee under Article 2 shall terminate, all rights to the Software will revert to
Krajnik and Licensee may not make any further use or exploitation of the Software.
8.3.2. Accruing Obligations. Termination or expiration of this Agreement shall not relieve the
parties of obligations accruing prior to such termination or expiration, including obligations to issue equity under
Article 4 to Krajnik, up to the date of termination or expiration.
8.3.3. Survival. The parties’ respective rights, obligations and duties under Articles 6, 7 and 9
and Sections 4.1, 4.2, 4.3, 8.3, as well as any rights, obligations and duties which by their nature extend beyond
the expiration or termination of this Agreement, shall survive any expiration or termination of this Agreement.
9. Miscellaneous.
9.1. Use of Name. Licensee shall not use or register the name “ Krajnik ” (alone or as part of another
name) or any logos, seals, insignia or other words, names, symbols or devices that identify Krajnik or any
Krajnik school, unit, division or affiliate (“Krajnik Names”) for any purpose except with the prior written
approval of, and in accordance with restrictions required by, Krajnik. Without limiting the foregoing, Licensee
shall cease all use of Krajnik Names on the termination or expiration of this Agreement except as otherwise
9
approved by Krajnik. This restriction shall not apply to any information required by law to be disclosed to any
governmental entity.
9.2. Entire Agreement. This Agreement is the sole agreement with respect to the subject matter
hereof and except as expressly set forth herein, supersedes all other agreements and understandings between
the parties with respect to the same.
9.3. Notices. Unless otherwise specifically provided, all notices required or permitted by this
Agreement shall be in writing and may be delivered personally, or may be sent by facsimile, overnight delivery
or certified mail, return receipt requested, to the following addresses, unless the parties are subsequently
notified of any change of address in accordance with this Section:
If to Licensee:
If to Krajnik: Office of Technology Development
Krajnik d.o.o.
Kidričeva cesta 66c
4220 Škofja Loka, Slovenija
Telephone: (0)4 20 20 300
Email: info@krajnik.si
Any notice shall be deemed to have been received as follows: (a) by personal delivery, upon receipt; (b)
by facsimile or overnight delivery, one business day after transmission or dispatch; (c) by certified mail, as
evidenced by the return receipt. If notice is sent by facsimile, a confirming copy of the same shall be sent by
mail to the same address.
9.4. Governing Law and Jurisdiction. This Agreement will be governed by, and construed in
accordance with, the substantive laws of the Commonwealth of Massachusetts, without giving effect to any
choice or conflict of law provision. Any action, suit or other proceeding arising under or relating to this
Agreement (a “Suit”) shall be brought in a court of competent jurisdiction in the Commonwealth of
Massachusetts, and the parties hereby consent to the sole jurisdiction of the state and federal courts sitting in
the Commonwealth of Massachusetts.
9.5. Binding Effect. This Agreement shall be binding upon and inure to the benefit of the parties and
their respective legal representatives, successors and permitted assigns.
9.6. Counterparts. The parties may execute this Agreement in two or more counterparts, each of
which shall be deemed an original.
9.7. Amendment; Waiver. This Agreement may be amended, modified, superseded or canceled,
and any of the terms may be waived, only by a written instrument executed by each party or, in the case of
waiver, by the party waiving compliance. The delay or failure of either party at any time or times to require
performance of any provisions hereof shall in no manner affect the rights at a later time to enforce the same.
10
No waiver by either party of any condition or of the breach of any term contained in this Agreement, whether by
conduct, or otherwise, in any one or more instances, shall be deemed to be, or considered as, a further or
continuing waiver of any such condition or of the breach of such term or any other term of this Agreement.
9.8. No Agency or Partnership. Nothing contained in this Agreement shall give either party the right
to bind the other, or be deemed to constitute either party as agent for or partner of the other or any third party.
9.9. Assignment and Successors. This Agreement may not be assigned by either party without the
consent of the other, except that each party may assign this Agreement and the rights, obligations and interests
of such party to any purchaser of all or substantially all of its assets to which the subject matter of this
Agreement relates, or to any successor corporation resulting from any merger or consolidation of such party
with or into such corporation; provided, in each case, that the assignee agrees in writing to be bound by all of
the terms of this Agreement. Any assignment purported or attempted to be made in violation of the terms of
this Section 9.9 shall be null and void and of no legal effect.
9.10. Force Majeure. Neither party will be responsible for delays resulting from causes beyond the
reasonable control of such party, including fire, explosion, flood, war, strike, or riot, provided that the
nonperforming party uses commercially reasonable efforts to avoid or remove such causes of nonperformance
and continues performance under this Agreement with reasonable dispatch whenever such causes are removed.
9.11. Severability. If any provision of this Agreement is or becomes invalid or is ruled invalid by any
court of competent jurisdiction or is deemed unenforceable, it is the intention of the parties that the remainder
of this Agreement shall not be affected.
[Signature page follows]
11
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by their duly authorized
representatives as of the date first written above.
Direktor Krajnik d.o.o.
Martin Krajnik
[Licensee]
Licence aggreement of Krajnik.si
This document governs
- the use of our website, and,
- any other related agreement or legal relationship with us
in a legally binding way.
You must read this document carefully.
Our website is provided by:
Krajnik d.o.o., Kidričeva cesta 66c, 4220 Škofja Loka
Contact email: info@krajnik.si
This document was generated with the use of the terms and conditions generator.
LICENSE AGREEMENT
This License Agreement (this “Agreement”) is entered into as of this 01.01.2025
(the “Effective Date”), by and between ________________, a _________________ existing
under the laws of ___________________, having a place of business at
____________________________ (“Licensee”) and President and Fellows of Harvard
College, an educational and charitable corporation existing under the laws and the constitution of
the Commonwealth of Massachusetts, having a place of business at Richard A. and Susan F.
Smith Campus Center, Suite 727, 1350 Massachusetts Avenue, Cambridge, Massachusetts 02138
(“Harvard”).
WHEREAS, the technology claimed in the Patent Rights (as defined below) was
developed in research conducted by Harvard researcher Dr. ___________;
WHEREAS, Licensee wishes to obtain a license under the Patent Rights;
WHEREAS, Harvard desires to have products based on the inventions described in the
Patent Rights developed and commercialized to benefit the public; and
WHEREAS, Licensee has represented to Harvard, in order to induce Harvard to enter
into this Agreement, that Licensee shall commit itself to commercially reasonable efforts to
develop, obtain regulatory approval for and commercialize such products;
NOW, THEREFORE, the parties hereto, intending to be legally bound, hereby agree as
follows:
| 1. | Definitions. |
| Whenever used in this Agreement with an initial capital letter, the terms defined in this Article 1, whether used in the singular or the plural, shall have the meanings specified below. | |
| 1.1. | “Affiliate” means, with respect to a person, organization or entity, any person, |
organization or entity controlling, controlled by or under common control with, such person,
organization or entity. For purposes of this definition only, “control” of another person,
organization or entity will mean the possession, directly or indirectly, of the power to direct or
cause the direction of the activities, management or policies of such person, organization or
entity, whether through the ownership of voting securities, by contract or otherwise. Without
limiting the foregoing, control will be presumed to exist when a person, organization or entity (a)
owns or directly controls fifty percent (50%) or more of the outstanding voting stock or other
ownership interest of the other organization or entity or (b) possesses, directly or indirectly, the
power to elect or appoint fifty percent (50%) or more of the members of the governing body of
the other organization or entity. The parties acknowledge that in the case of certain entities
2
organized under the laws of certain countries outside of the United States, the maximum
percentage ownership permitted by law for a foreign investor may be less than fifty percent
(50%), and that in such cases such lower percentage will be substituted in the preceding
sentence.
| 1.2. | “Calendar Quarter” means each of the periods of three (3) consecutive calendar |
| months ending on March 31, June 30, September 30 and December 31 during the Term. | |
| 1.3. | “Development Milestones” means the development and commercialization |
| milestones set forth in Exhibit 1.3 hereto. | |
| 1.4. | “Development Plan” means the plan for the development of Licensed Products |
| attached hereto as Exhibit 1.4, as such plan may be adjusted from time to time pursuant to | |
| Section 3.2. 1.5. | “Field” means _________________. |
1.6. “Licensed Product” means on a country-by-country basis, any product, the
making, using, selling, offering for sale, importing or exporting in the country in question would
(without the license granted hereunder) infringe directly, indirectly by inducement of
infringement, or indirectly by contributory infringement, at least one pending Valid Claim (were
it to have issued) or issued Valid Claim in that country.
1.7. “Net Sales” means the gross amount billed or invoiced by or on behalf of
Licensee and its Affiliates (in each case, the “Invoicing Entity”) on sales, leases or other
transfers of Licensed Products, less the following to the extent applicable with respect to such
sales, leases or other transfers and not previously deducted from the gross invoice price: (a)
customary trade, quantity or cash discounts to the extent actually allowed and taken; (b) amounts
actually repaid or credited by reason of rejection or return of any previously sold, leased or
otherwise transferred Licensed Products; (c) customer freight charges that are paid by or on
behalf of the Invoicing Entity; and (d) to the extent separately stated on purchase orders, invoices
or other documents of sale, any sales, value added or similar taxes, custom duties or other similar
governmental charges levied directly on the production, sale, transportation, delivery or use of a
Licensed Product that are paid by or on behalf of the Invoicing Entity, but not including any tax
levied with respect to income; provided that:
1.7.1 in any transfers of Licensed Products between an Invoicing Entity and an
Affiliate of such Invoicing Entity not for the purpose of resale by such Affiliate, Net Sales will
be equal to the fair market value of the Licensed Products so transferred, assuming an arm’s
length transaction made in the ordinary course of business, and
1.7.2. in the event that an Invoicing Entity receives non-cash consideration for
any Licensed Products or in the case of transactions not at arm’s length with a non-Affiliate of an
Invoicing Entity, Net Sales will be calculated based on the fair market value of such
3
consideration or transaction, assuming an arm’s length transaction made in the ordinary course of
business.
Sales of Licensed Products by an Invoicing Entity to its Affiliate for resale by such
Affiliate will not be deemed Net Sales. Instead, Net Sales will be determined based on the gross
amount billed or invoiced by such Affiliate upon resale of such Licensed Products to a third
party purchaser.
1.8. “Patent Rights” means, in each case to the extent owned and controlled by
Harvard: (a) the patents and patent applications listed in Exhibit 1.8 (including the PCT and/or
U.S. utility application claiming priority to such application(s) that are filed on or before the one
year conversion date of such application(s)); (b) any patent or patent application that claims
priority to and is a divisional, continuation, reissue, renewal, reexamination, substitution or
extension of any patent application identified in (a); (c) any patents issuing on any patent
application identified in (a) or (b), including any reissues, renewals, reexaminations,
substitutions or extensions thereof; (d) any claim of a continuation-in-part application or patent
(including any reissues, renewals, reexaminations, substitutions or extensions thereof) that is
entitled to the priority date of, and is directed specifically to subject matter specifically described
in, at least one of the patents or patent applications identified in (a), (b) or (c); (e) any foreign
counterpart (including PCTs) of any patent or patent application identified in (a), (b) or (c) or of
the claims identified in (d); and (f) any supplementary protection certificates, pediatric
exclusivity periods, any other patent term extensions and exclusivity periods and the like of any
patents and patent applications identified in (a) through (e).
1.9. “Valid Claim” means: (a) a claim of an issued and unexpired patent within the
Patent Rights that has not been (i) held permanently revoked, unenforceable, unpatentable or
invalid by a decision of a court or governmental body of competent jurisdiction, unappealable or
unappealed within the time allowed for appeal, (ii) rendered unenforceable through disclaimer or
otherwise, (iii) abandoned or (iv) permanently lost through an interference or opposition
proceeding without any right of appeal or review; or (b) a pending claim of a pending patent
application within the Patent Rights that (i) has been asserted and continues to be prosecuted in
good faith and (ii) has not been abandoned or finally rejected without the possibility of appeal or
refilling.
| 2. | License Grant. |
| 2.1. | License. Subject to the terms and conditions set forth in this Agreement, Harvard |
| hereby grants to Licensee a non-exclusive, worldwide, non-transferable, royalty-bearing license under the Patent Rights solely to develop, make, have made, use, market, offer for sale, sell and import Licensed Products in the Field. | |
| 2.2. | No Other Grant of Rights. Except as expressly provided in this Agreement, |
nothing in this Agreement shall be construed to confer any ownership interest, license or other
rights upon Licensee by implication, estoppel or otherwise as to any technology, intellectual
4
property rights, products or biological materials of Harvard or any other entity, regardless of
whether such technology, intellectual property rights, products or biological materials are
dominant, subordinate or otherwise related to any Patent Rights.
2.3. Affiliates. The licenses granted to Licensee under Section 2.1 shall include the
right to have some or all of Licensee’s rights or obligations under this Agreement exercised or
performed by one or more of Licensee’s Affiliates; provided that:
2.3.1. no such Affiliate shall be entitled to grant, directly or indirectly, to any
third party any right of whatever nature under, or with respect to, or permitting any use or
exploitation of, any of the Patent Rights, including any right to develop, manufacture, market or
sell Licensed Products; and
2.3.2. any act or omission taken or made by an Affiliate of Licensee under this
Agreement shall be deemed an act or omission by Licensee under this Agreement.
3. Development and Commercialization.
3.1. Diligence. Licensee shall use commercially reasonable efforts (a) to develop
Licensed Products in accordance with the Development Plan, (b) to introduce Licensed Products
into the commercial market and (c) to market Licensed Products following such introduction into
the market. In addition, Licensee, by itself or through its Affiliates, shall achieve each of the
Development Milestones within the time periods specified in Exhibit 1.3.
3.2. Adjustment of Development Plan. Licensee will be entitled, from time to time,
to make such adjustments to the then applicable Development Plan as Licensee believes, in its
good faith judgment, are needed in order to improve Licensee’s ability to meet its diligence
obligations under Section 3.1. Licensee shall provide Harvard with copies of any such adjusted
Development Plans.
3.3. Reporting. Within sixty (60) days after the end of each calendar year, Licensee
shall furnish Harvard with a written report summarizing its and its Affiliates’ efforts during the
prior year to develop and commercialize Licensed Products, including without limitation: (a)
research and development activities; (b) commercialization efforts; and (c) marketing efforts.
Each report shall contain a sufficient level of detail for Harvard to assess whether Licensee is in
compliance with its obligations under Section 3.1 and a discussion of intended efforts for the
then current year. Together with each report, Licensee shall provide Harvard with a copy of the
then current Development Plan.
3.4. Failure to Meet Development Milestone; Opportunity to Cure. If Licensee
believes that it will not achieve a Development Milestone, it may notify Harvard in writing in
advance of the relevant deadline. Licensee shall include with such notice (a) a reasonable
explanation of the reasons for such failure (and lack of finances will not constitute reasonable
basis for such failure) (“Explanation”) and (b) a reasonable, detailed, written plan for promptly
5
achieving a reasonable extended and/or amended milestone (“Plan”). If Licensee so notifies
Harvard, but fails to provide Harvard with both an Explanation and Plan, then Licensee will have
an additional thirty (30) days or until the original deadline of the relevant Development
Milestone, whichever is later, to meet such milestone. Licensee’s failure to do so shall constitute
a material breach of this Agreement and Harvard shall have the right to terminate this Agreement
forthwith. If Licensee so notifies Harvard and provides Harvard with an Explanation and Plan,
both of which are acceptable to Harvard in its reasonable discretion, then Exhibit 1.3 will be
amended automatically to incorporate the extended and/or amended milestone set forth in the
Plan. If Licensee so notifies Harvard and provides Harvard with an Explanation and Plan, but
the Explanation is not acceptable to Harvard in its reasonable discretion (e.g., Licensee asserts
lack of finances or development preference for a non-Licensed Product), then Licensee will have
an additional thirty (30) days or until the original deadline of the relevant Development
Milestone, whichever is later, to meet such milestone. Licensee’s failure to do so shall constitute
a material breach of this Agreement and Harvard shall have the right to terminate this Agreement
forthwith. If Licensee so notifies Harvard and provides Harvard with an Explanation and Plan,
but the Plan is not acceptable to Harvard in its reasonable discretion, then Harvard will explain to
Licensee why the Plan is not acceptable and provide Licensee with suggestions for an acceptable
Plan. Licensee will have one opportunity to provide Harvard with an acceptable Plan within
ninety (90) days, during which time Harvard agrees to work with Licensee in its effort to develop
an acceptable Plan. If, within such ninety (90) days, Licensee provides Harvard with an
acceptable Plan, then Exhibit 1.3 will be amended automatically to incorporate the extended
and/or amended milestone set forth in the Plan. If, within such ninety (90) days, Licensee fails to
provide an acceptable Plan, then Licensee will have an additional thirty (30) days or until the
original deadline of the relevant Development Milestone, whichever is later, to meet such
milestone. Licensee’s failure to do so shall constitute a material breach of this Agreement and
Harvard shall have the right to terminate this Agreement forthwith. For clarity, if Licensee fails
to achieve a Development Milestone and does not avail itself of the procedure set forth in this
Section 3.4, such failure shall be a material breach that entitles Harvard to proceed under Section
9.2.2.1
| 4. | Consideration for Grant of License. |
| 4.1. | License Issuance Fee. Licensee agrees to pay Harvard a non-refundable license |
| fee of ____________________ EUR (______€), due and payable within _______ (__) days after the Effective Date. | |
| 4.2. | Annual License Maintenance Fee. Licensee agrees to pay Harvard annual |
license maintenance fee as follows:
4.2.1. _____________EUR (________________€) for calendar years
___and _________;
4.2.2.__________ EUR (________________€) for calendar years ___and
_________;and
6
4.2.3. __________ EUR (________________€) for calendar year ___and
each subsequent calendar year during the Term.
Each such fee shall be due and payable on January 1st of the calendar year to which such fee
applies.
4.3. Milestone Payments. Licensee shall pay Harvard the following milestone
payments with respect to each Licensed Product to reach each milestone, regardless of whether
such milestone is achieved by Licensee or Affiliate of Licensee:
4.3.1. ____________ EUR (€________________) upon_______;
4.3.2. ____________EUR (€________________) upon_________; and
4.3.3. ____________EUR (€________________) upon_________.
Licensee shall notify Harvard in writing within thirty (30) days following the achievement of
each milestone described in this Section 4.3, and shall make the appropriate milestone payment
within thirty (30) days after the achievement of such milestone.
The milestones set forth in Section 4.3 are intended to be successive. If a Licensed Product is
not required to undergo the event associated with a particular milestone for a Licensed Product
(“Skipped Milestone”), such Skipped Milestone will be deemed to have been achieved upon the
achievement by such Licensed Product of the next successive milestone (“Achieved Milestone”).
Payment for any Skipped Milestone that is owed in accordance with the provisions of this
Section 4.3 shall be due within thirty (30) days after the achievement of the Achieved Milestone.
4.4. Royalty Payments on Net Sales.
4.4.1. Licensee shall pay Harvard an amount equal to ______ percent (__%) of
annual Net Sales. With respect to each Licensed Product, royalties will be payable on a countryby-country basis, for so long as the making, using or selling of the Licensed Product is covered
by a Valid Claim in the country in which such Licensed Product is made, used or sold.
4.4.2. Patent Challenge. If Licensee or its Affiliate (“Challenging Party”)
commences an action in which it challenges the validity, enforceability or scope of any of the
Patent Rights (a “Challenge Proceeding”), the royalty rate specified in Section 4.4.1 will be
doubled with respect to Net Sales of Licensed Products that are sold during the pendency of such
Challenge Proceeding. If the outcome of such Challenge Proceeding is a determination against
the Challenging Party, (a) the royalty rate specified in Section 4.4.1 with respect to Net Sales of
Licensed Products that are covered by the Patent Rights that are the subject of such Challenge
Proceeding shall remain at such doubled rate and (b) Licensee shall reimburse Harvard for all
expenses incurred by Harvard (including reasonable attorneys’ fees) in connection with such
7
Challenge Proceeding. If the outcome of such Challenge Proceeding is a determination in favor
of the Challenging Party, Licensee will have no right to recoup any royalties paid before or
during the pendency of such Challenge Proceeding
5. Reports; Payments; Records.
5.1. Reports and Payments.
5.1.1. Reports. Within thirty (30) days after the conclusion of each Calendar
Quarter commencing with the first Calendar Quarter in which Net Sales are generated, Licensee
shall deliver to Harvard a report containing the following information (in each instance, with a
Licensed Product-by-Licensed Product breakdown):
(a) the number of units of Licensed Products sold by Licensee and its
Affiliates for the applicable Calendar Quarter;
(b) the gross amount billed for Licensed Products sold by Licensee and its
Affiliates during the applicable Calendar Quarter;
(c) a calculation of Net Sales for the applicable Calendar Quarter,
including an itemized listing of applicable deductions;
(d) the total amount payable to Harvard in U.S. Dollars on Net Sales for
the applicable Calendar Quarter, together with the exchange rates used for conversion; and
(e) a list of Harvard Case numbers for all Patent Rights that have Valid
Claims covering the Licensed Products.
Each such report shall be certified on behalf of Licensee as true, correct and complete in all
material respects. If no amounts are due to Harvard for a particular Calendar Quarter, the report
shall so state.
5.1.2. Payment for Net Sales. Within thirty (30) days after the end of each
Calendar Quarter, Licensee shall pay Harvard all amounts due with respect to Net Sales for the
applicable Calendar Quarter.
5.2. Payment Currency. All payments due under this Agreement will be paid in U.S.
Dollars. Conversion of foreign currency to U.S. Dollars will be made at the conversion rate
existing in the United States (as reported in the Wall Street Journal) on the last working day of
the applicable Calendar Quarter. Such payments will be without deduction of exchange,
collection, or other charges.
5.3. Records. Licensee shall maintain, and shall cause its Affiliates to maintain,
complete and accurate records of Licensed Products that are made, used or sold under this
8
Agreement and any amounts payable to Harvard in relation to such Licensed Products, which
records shall contain sufficient information to permit Harvard to confirm the accuracy of any
reports or notifications delivered to Harvard under Section 5.1. Licensee and/or its Affiliates, as
applicable, shall retain such records relating to a given Calendar Quarter for at least five (5)
years after the conclusion of that Calendar Quarter, during which time Harvard will have the
right, at its expense, to cause an independent, certified public accountant (or, in the event of a
non-financial audit, other appropriate auditor) to inspect such records during normal business
hours for the purposes of verifying the accuracy of any reports and payments delivered under this
Agreement and Licensee’s compliance with the terms hereof. Such accountant or other auditor,
as applicable, shall not disclose to Harvard any information other than information relating to the
accuracy of reports and payments delivered under this Agreement. The parties shall reconcile
any underpayment or overpayment within thirty (30) days after the accountant delivers the
results of the audit. If any audit performed under this Section 5.3 reveals an underpayment in
excess of five percent (5%) in any calendar year, Licensee shall reimburse Harvard for all
amounts incurred in connection with such audit. Harvard may exercise its rights under this
Section 5.3 only once every year per audited entity and only with reasonable prior notice to the
audited entity.
5.4. Late Payments. Any payments by Licensee that are not paid on or before the
date such payments are due under this Agreement will bear interest at the lower of (a) one and
one half percent (1.5%) per month and (b) the maximum rate allowed by law. Interest will
accrue beginning on the first day following the due date for payment and will be compounded
quarterly. Payment of such interest by Licensee will not limit, in any way, Harvard’s right to
exercise any other remedies Harvard may have as a consequence of the lateness of any payment.
5.5. Payment Method. Each payment due to Harvard under this Agreement shall be
paid by check or wire transfer of funds to Harvard’s account in accordance with written
instructions provided by Harvard. If made by wire transfer, such payments shall be marked so as
to refer to this Agreement.
| 5.6. | Withholding and Similar Taxes. All amounts to be paid to Harvard pursuant to |
| this Agreement shall be without deduction of exchange, collection, or other charges, and, specifically, without deduction of withholding or similar taxes or other government imposed fees or taxes, except as permitted in the definition of Net Sales. | |
| 6. | Intellectual Property. |
| 6.1. | Responsibility. Harvard shall have sole responsibility for and control over the |
preparation, filing, prosecution, protection and maintenance of all Patent Rights, and all decisionmaking authority with regard to Patent Rights shall vest in Harvard (including, without
limitation, as to whether to maintain or abandon any patent, patent application or claim thereof
within Patent Rights). Harvard shall keep Licensee informed with respect to the course and
conduct of patent applications and prosecution matters.
9
6.2. Patent Expenses.
6.2.1. Past Expenses. Licensee shall reimburse Harvard for all unreimbursed,
documented, out-of-pocket expenses incurred by Harvard through the end of the last full
calendar quarter before the Effective Date (the “Past Expense Period”) with respect to the
preparation, filing, prosecution, protection and maintenance of the Patent Rights.
6.2.2. Future Expenses. Subject to Section 6.2.3 and 6.3 below, within thirty
(30) days after its receipt of each invoice from Harvard, Licensee shall reimburse Harvard for all
documented, out-of-pocket expenses incurred by Harvard pursuant to Section 6.1, including
those incurred between the end of the Past Expense Period and the Effective Date. For purposes
of this Section 6.2.2, expenses incurred for work or filing fees authorized prior to the end of the
Past Expense Period for which Harvard has not yet received a bill from outside counsel shall be
deemed incurred after the end of the Past Expense Period.
6.2.3. Additional Licensees. In the event that, after the Effective Date, Harvard
enters into a license with a third party with respect to any of the Patent Rights, Harvard shall
proportionately reduce Licensee’s pro rata share of the expenses described in Section 6.2.2.
Furthermore, Harvard shall use reasonable efforts to cause each new licensee of the Patent
Rights to agree to pay an appropriate portion of the expenses described in Sections 6.2.1 and
6.2.2, taking into consideration the scope and type (i.e., exclusive or non-exclusive) of such new
license. In the event that Harvard is able to collect such amounts, Harvard shall reimburse
Licensee for a pro rata share of such expenses already paid by Licensee.
6.3. Abandonment. If Licensee decides that it does not wish to continue to pay the
future patent expenses described in Section 6.2.2 with respect to Patent Rights in a country
(“Abandoned Patent Rights”), Licensee shall provide Harvard with prompt written notice of such
election. Ninety (90) days after receipt of such notice by Harvard, Licensee shall be released
from its obligation to reimburse Harvard for the expenses incurred thereafter as to such
Abandoned Patent Rights; provided, however, that expenses incurred prior to the end of such 90-
day period for which Harvard has not yet received a bill from outside counsel shall be deemed
incurred after the end of such period. In the event of Licensee’s abandonment of any Patent
Rights, Harvard may terminate (at any time upon written notice) the license granted to Licensee
hereunder with respect to such Abandoned Patent Rights. In such case, Licensee will have no
rights whatsoever to exploit such Abandoned Patent Rights and the claims of such Abandoned
Patent Rights shall cease to constitute Valid Claims.
6.4. Small Entity Designation. If Licensee does not qualify, or at any point during
the term of this Agreement ceases to qualify, as a “small entity” as provided by the United States
Patent and Trademark Office (USPTO), Licensee shall so notify Harvard immediately, in order
to enable Harvard to comply with USPTO regulations regarding payment of fees with respect to
Patent Rights. [ALTERNATIVELY – Large Entity Designation. The Parties agree that,
commencing on the Effective Date, in all instances, Harvard shall pay the fees prescribed for
large entities to the USPTO.]
10
6.5. Enforcement. Harvard shall have the right, acting in its sole discretion, to
prosecute in its own name and at its own expense any possible or actual infringement of patents
related to the Patent Rights. Licensee agrees to notify Harvard of each suspected or confirmed
infringement of such patents of which it is or becomes aware. Licensee agrees to cooperate fully
in any action under this Section 6.5, provided that Harvard will reimburse Licensee for any
reasonable costs and expenses incurred by Licensee in connection with providing such
assistance.
6.6. Marking. Licensee and its Affiliates shall mark all Licensed Products sold or
otherwise disposed of by it in the United States with the word “Patent” and the number of all
patents included within the Patent Rights that cover such Licensed Products. All License
Products shipped or sold in other countries shall be marked in such a manner as to conform with
the patent laws and practice of the country to which such products are shipped or in which such
products are sold.
7. Warranties; Limitation of Liability.
7.1. Compliance with Law. Licensee represents and warrants that it will comply, and
will ensure that its Affiliates comply, with all local, state, federal and international laws and
regulations relating to the development, manufacture, use, sale and importation of Licensed
Products. Without limiting the foregoing, Licensee represents and warrants that it will comply,
and will ensure that its Affiliates comply, with all United States export control laws and
regulations.
7.2. No Warranty.
7.2.1. NOTHING CONTAINED HEREIN SHALL BE DEEMED TO BE A
WARRANTY BY HARVARD THAT IT CAN OR WILL BE ABLE TO OBTAIN PATENTS
ON PATENT APPLICATIONS INCLUDED IN THE PATENT RIGHTS, OR THAT ANY OF
THE PATENT RIGHTS WILL AFFORD ADEQUATE OR COMMERCIALLY
WORTHWHILE PROTECTION.
7.2.2. HARVARD MAKES NO WARRANTIES WHATSOEVER AS TO THE
COMMERCIAL OR SCIENTIFIC VALUE OF THE PATENT RIGHTS. HARVARD MAKES
NO REPRESENTATION THAT THE PRACTICE OF THE PATENT RIGHTS OR THE
DEVELOPMENT, MANUFACTURE, USE, SALE OR IMPORTATION OF ANY LICENSED
PRODUCT, OR ANY ELEMENT THEREOF, WILL NOT INFRINGE ANY PATENT OR
PROPRIETARY RIGHTS.
7.2.3. EXCEPT AS OTHERWISE EXPRESSLY PROVIDED IN THIS
AGREEMENT, NEITHER PARTY MAKES ANY WARRANTY WITH RESPECT TO ANY
TECHNOLOGY, PATENTS, GOODS, SERVICES, RIGHTS OR OTHER SUBJECT
MATTER OF THIS AGREEMENT AND EACH PARTY HEREBY DISCLAIMS
11
WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE
AND NONINFRINGEMENT WITH RESPECT TO ANY AND ALL OF THE FOREGOING.
7.3. Limitation of Liability.
7.3.1. Except with respect to matters for which Licensee is obligated to
indemnify Harvard under Article 8, neither party will be liable to the other with respect to any
subject matter of this Agreement under any contract, negligence, strict liability or other legal or
equitable theory for (a) any indirect, incidental, consequential or punitive damages or lost profits
or (b) cost of procurement of substitute goods, technology or services.
7.3.2. Harvard’s aggregate liability for all damages of any kind arising out of or
relating to this Agreement or its subject matter under any contract, negligence, strict liability or
other legal or equitable theory shall not exceed the amounts paid to Harvard under this
Agreement.
8. Indemnification and Insurance.
8.1. Indemnity.
8.1.1. Licensee shall indemnify, defend and hold harmless Harvard and its
current and former directors, governing board members, trustees, officers, faculty, medical and
professional staff, employees, students and agents and their respective successors, heirs and
assigns (the “Indemnitees”) from and against any claim, liability, cost, expense, damage,
deficiency, loss or obligation of any kind or nature (including reasonable attorneys’ fees and
other costs and expenses of litigation) based upon, arising out of or otherwise relating to this
Agreement, including any cause of action relating to product liability concerning any product,
process or service made, used, sold or performed pursuant to any right or license granted under
this Agreement (collectively “Claims”). Neither Licensee nor Harvard shall settle any Claim
without the prior written consent of the other, which consent shall not be unreasonably withheld.
8.1.2. Licensee shall, at its own expense, provide attorneys reasonably
acceptable to Harvard to 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.
8.2. Insurance.
8.2.1. Beginning at the time any Licensed Product is being commercially
distributed or sold (other than for the purpose of obtaining regulatory approvals) by Licensee, or
by an 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 50000,00€ per incident
and €10000,00 annual aggregate and naming the Indemnitees as additional insureds. During
clinical trials of any such Licensed Product, Licensee shall, at its sole cost and expense, procure
12
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 (a) product liability coverage and (b) broad form contractual liability
coverage for Licensee’s indemnification obligations under this Agreement.
8.2.2. If Licensee elects to self-insure all or part of the limits described above in
Section 8.2.1 (including deductibles or retentions that are in excess of € annual
aggregate) such self-insurance program must be acceptable to Harvard and CRICO/RMF
(Harvard’s insurer) 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 obligations under this Agreement.
8.2.3. 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 effective at the end of such
fifteen (15) day period without notice or any additional waiting periods.
8.2.4. Licensee shall maintain such commercial general liability insurance
beyond the expiration or termination of this Agreement during (a) the period that any Licensed
Product is being commercially distributed or sold by Licensee or an Affiliate or agent of
Licensee and (b) a reasonable period after the period referred to in (a) above, which in no event
shall be less than fifteen (15) years.
| 9. | Term and Termination. |
| 9.1. | Term. The term of this Agreement shall commence on the Effective Date and, |
| unless earlier terminated as provided in this Article 9, shall continue in full force and effect until the expiration of the last to expire Valid Claim (the “Term”). | |
| 9.2. | Termination. 9.2.1. Termination Without Cause. Licensee may terminate this Agreement |
upon sixty (60) days prior written notice to Harvard.
9.2.2. Termination for Default.
9.2.2.1. In the event that either party commits a material breach of its
obligations under this Agreement and fails to cure that breach within thirty (30) days after
receiving written notice thereof, the other party may terminate this Agreement immediately upon
written notice to the party in breach.
13
9.2.2.2. If Licensee defaults in its obligations under Section 8.2 to procure
and maintain insurance or, if Licensee has in any event failed to comply with the notice
requirements contained therein, then Harvard may terminate this Agreement immediately
without notice or additional waiting period.
9.2.2.3. Harvard shall be entitled to terminate this Agreement in
accordance with the provisions of Section 3.4
9.2.3. Bankruptcy. Harvard may terminate this Agreement upon notice to
Licensee if Licensee becomes insolvent, is adjudged bankrupt, applies for judicial or
extra-judicial settlement with its creditors, makes an assignment for the benefit of its creditors,
voluntarily files for bankruptcy or has a receiver or trustee (or the like) in bankruptcy appointed
by reason of its insolvency, or in the event an involuntary bankruptcy action is filed against
Licensee and not dismissed within ninety (90) days, or if the other party becomes the subject of
liquidation or dissolution proceedings or otherwise discontinues business.
9.3. Effect of Termination or Expiration.
9.3.1. Termination of Rights. Upon expiration or termination of this
Agreement by either party pursuant to any of the provisions of Section 9.2 the rights and licenses
granted to Licensee under Article 2 shall terminate, all rights in and to and under the Patent
Rights will revert to Harvard and neither Licensee nor its Affiliates may make any further use or
exploitation of the Patent Rights.
9.3.2. Accruing Obligations. Termination or expiration of this Agreement shall
not relieve the parties of obligations accruing prior to such termination or expiration, including
obligations to pay amounts accruing hereunder up to the date of termination or expiration. After
the date of termination or expiration (except in the case of termination by Harvard pursuant to
Section 9.2), Licensee and its Affiliates (a) may sell Licensed Products then in stock and (b) may
complete the production of Licensed Products then in the process of production and sell the
same; provided in the case of both (a) and (b) Licensee shall pay the applicable royalties and
payments to Harvard in accordance with Article 4, provide reports and audit rights to Harvard
pursuant to Article 5 and maintain insurance in accordance with the requirements of Section 8.2.
9.4. Survival. The parties’ respective rights, obligations and duties under Articles 5,
8, 9 and 10 and Sections 7.2 and 7.3, as well as any rights, obligations and duties which by their
nature extend beyond the expiration or termination of this Agreement, shall survive any
expiration or termination of this Agreement.
10. Miscellaneous.
10.1. No Security Interest. Licensee shall not enter into any agreement under which
Licensee grants to or otherwise creates in any third party a security interest in this Agreement or
any of the rights granted to Licensee herein. Any grant or creation of a security interest
14
purported or attempted to be made in violation of the terms of this Section 10.1 shall be null and
void and of no legal effect.
10.2. Use of Name. Except as provided below, Licensee shall not, and shall ensure that
its Affiliates shall not, use or register the name “Harvard” (alone or as part of another name) or
any logos, seals, insignia or other words, names, symbols or devices that identify Harvard or any
Harvard school, unit, division or affiliate (“Harvard Names”) for any purpose except with the
prior written approval of, and in accordance with restrictions required by, Harvard. Without
limiting the foregoing, Licensee shall, and shall ensure that its Affiliates shall, cease all use of
Harvard Names on the termination or expiration of this Agreement except as otherwise approved
by Harvard. This restriction shall not apply to any information required by law to be disclosed to
any governmental entity.
10.3. Entire Agreement. This Agreement is the sole agreement with respect to the
subject matter hereof and, except as expressly set forth herein, supersedes all other agreements
and understandings between the parties with respect to the same.
10.4. Notices. Unless otherwise specifically provided, all notices required or permitted
by this Agreement shall be in writing and may be delivered personally, or may be sent by
facsimile, expedited delivery or certified mail, return receipt requested, to the following
addresses, unless the parties are subsequently notified of any change of address in accordance
with this Section 10.4:
If to Licensee:
If to Harvard: Office of Technology Development
Harvard University
Richard A. and Susan F. Smith Campus Center, Suite 727
1350 Massachusetts Avenue
Cambridge, Massachusetts 02138
Attn.: Chief Technology Development Officer
Any notice shall be deemed to have been received as follows: (a) by personal delivery or
expedited delivery, upon receipt; (b) by facsimile, one business day after transmission or
dispatch; (c) by certified mail, as evidenced by the return receipt. If notice is sent by facsimile, a
confirming copy of the same shall be sent by mail to the same address.
10.5. Governing Law and Jurisdiction. This Agreement will be governed by, and
construed in accordance with, the substantive laws of the Commonwealth of Massachusetts,
without giving effect to any choice or conflict of law provision, except that questions affecting
the construction and effect of any patent shall be determined by the law of the country in which
the patent shall have been granted. Any action, suit or other proceeding arising under or relating
to this Agreement (a “Suit”) shall be brought in a court of competent jurisdiction in the
15
Commonwealth of Massachusetts, and the parties hereby consent to the sole jurisdiction of the
state and federal courts sitting in the Commonwealth of Massachusetts. Each party agrees not to
raise any objection at any time to the laying or maintaining of the venue of any Suit in any of the
specified courts, irrevocably waives any claim that Suit has been brought in any inconvenient
forum and further irrevocably waives the right to object, with respect to any Suit, that such court
does not have any jurisdiction over such party.
10.6. Binding Effect. This Agreement shall be binding upon and inure to the benefit of
the parties and their respective legal representatives, successors and permitted assigns.
10.7. Headings. Section and subsection headings are inserted for convenience of
reference only and do not form a part of this Agreement.
10.8. Counterparts. The parties may execute this Agreement in two or more
counterparts, each of which shall be deemed an original, but both of which together shall
constitute one and the same instrument. Transmission by facsimile or electronic mail of an
executed counterpart of this Agreement shall be deemed to constitute due and sufficient delivery
of such counterpart. If by electronic mail, the executed Agreement must be delivered in a .pdf
format.
10.9. Amendment; Waiver. This Agreement may be amended, modified, superseded
or canceled, and any of the terms may be waived, only by a written instrument executed by each
party or, in the case of waiver, by the party waiving compliance. The delay or failure of either
party at any time or times to require performance of any provisions hereof shall in no manner
affect the rights at a later time to enforce the same. No waiver by either party of any condition or
of the breach of any term contained in this Agreement, whether by conduct, or otherwise, in any
one or more instances, shall be deemed to be, or considered as, a further or continuing waiver of
any such condition or of the breach of such term or any other term of this Agreement.
10.10. No Agency or Partnership. Nothing contained in this Agreement shall give
either party the right to bind the other, or be deemed to constitute either party as agent for or
partner of the other or any third party.
10.11. Assignment and Successors. This Agreement may not be assigned by either
party without the consent of the other, which consent shall not be unreasonably withheld, except
that each party may, without such consent, assign this Agreement and the rights, obligations and
interests of such party to any of its Affiliates, to any purchaser of all or substantially all of its
assets to which the subject matter of this Agreement relates, or to any successor corporation
resulting from any merger or consolidation of such party with or into such corporation; provided,
in each case, that the assignee agrees in writing to be bound by the terms of this Agreement.
Any assignment purported or attempted to be made in violation of the terms of this Section 10.11
shall be null and void and of no legal effect.
16
10.12. Force Majeure. Except for monetary obligations hereunder, neither party will be
responsible for delays resulting from causes beyond the reasonable control of such party,
including fire, explosion, flood, war, strike, or riot, provided that the nonperforming party uses
commercially reasonable efforts to avoid or remove such causes of nonperformance and
continues performance under this Agreement with reasonable dispatch whenever such causes are
removed.
10.13. Interpretation. Each party hereto acknowledges and agrees that: (a) it and/or its
counsel reviewed and negotiated the terms and provisions of this Agreement and has contributed
to its revision; (b) the rule of construction to the effect that any ambiguities are resolved against
the drafting party shall not be employed in the interpretation of this Agreement; (c) the terms and
provisions of this Agreement shall be construed fairly as to both parties hereto and not in favor
of or against either party, regardless of which party was generally responsible for the preparation
of this Agreement and (d) the use of “include,” “includes,” or “including” herein shall not be
limiting and “or” shall not be exclusive.
10.14. Severability. If any provision of this Agreement is or becomes invalid or is ruled
invalid by any court of competent jurisdiction or is deemed unenforceable, it is the intention of
the parties that the remainder of this Agreement shall not be affected.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by their duly
authorized representatives as of the date first written above.
President and Fellows of Harvard College