|
||||||||||||||||||||||||||
| SEC Info℠ | | | Home | | | Search | | | My Interests | | | Help | | | Sign In | | | Please Sign In | |||||||
|
||||||||||||||||||||||||||
As Of Filer Filing For·On·As Docs:Size Issuer Agent 2/13/12 Organovo Holdings, Inc. 8-K:1,2,3,4 2/08/12 30:6.0M Edgar Agents LLC/FA |
Document/Exhibit Description Pages Size 1: 8-K Current Report HTML 1.17M 2: EX-2.1 Merger Agreement HTML 647K 3: EX-2.2 Certificate of Merger HTML 24K 4: EX-4.1 Bridge Warrant HTML 99K 5: EX-4.2 Bridge Note HTML 58K 6: EX-4.3 Instrument Defining the Rights of Security Holders HTML 157K 7: EX-4.4 Ppo Investor Warrant HTML 105K 8: EX-4.5 Exchange Warrant HTML 140K 9: EX-4.6 Bridge Exchange Warrant HTML 97K 10: EX-4.7 Form of Lock-Up HTML 22K 11: EX-10.1 Bridge Spa HTML 102K 13: EX-10.10 General Release Agreement HTML 27K 14: EX-10.11 Share Cancellation Agreement HTML 19K 15: EX-10.12 B Michaels Offer Lette HTML 24K 16: EX-10.13 Presnell Offer Letter HTML 25K 17: EX-10.14 2008 Equity Incentive Plan HTML 149K 18: EX-10.15 2012 Equity Incentive Plan HTML 125K 19: EX-10.16 Form of Stock Option Agreement HTML 59K 20: EX-10.17 Indemnification Agreemeent HTML 74K 21: EX-10.18 Baltera Mou HTML 21K 22: EX-10.19 Prestwich Sab Agreement HTML 51K 23: EX-10.20 Mooney Sab Agreement HTML 58K 24: EX-10.21 Vunjak-Novakovic Sab Agreement HTML 51K 25: EX-10.22 Kent Sab Agreement HTML 55K 26: EX-10.23 License Agreement HTML 80K 27: EX-10.24 License Agreement HTML 79K 28: EX-10.25 License Agreement HTML 233K 12: EX-10.9 Split-Off Agreement HTML 112K 29: EX-16.1 Letter Re Change in Certifying Accountant HTML 14K 30: EX-21.1 Subsidiaries of Organovo Holdings, Inc.* HTML 9K
|
LICENSE AGREEMENT
BETWEEN
CLEMSON UNIVERSITY
RESEARCH FOUNDATION
AND
Organovo, Inc.
CURF #01-025
Patent# 7,051,654
Entitled "Ink-Jet Printing of Viable Cells"
CURF License Agreement #
|
|
1.1
|
"CONFIDENTIAL INFORMATION" means all information pertaining to TECHNOLOGY and /or PATENT RIGHTS unless and until the TECHNOLOGY and any pending patent applications under the PATENT RIGHTS are described in or encompassed by a published U .S. or foreign patent application or issued patent. This information shall be deemed confidential.
|
|
1.6
|
"LICENSED PRODUCT" or "LICENSED PRODUCTS" means any PROCESS or PRODUCT, or any combination thereof, made, having been made, sold, used, leased, provided and/or imported by LICENSEE or its SUBLICENSEES.
|
|
1.8
|
"NON-COMMERCIAL RESEARCH PURPOSES" means the use or practice of the licensed TECHNOLOGY or PATENT RIGHTS for academic, research and all other not for-profit or scholarly purposes.
|
|
1.9
|
"PATENT RIGHTS" shall mean (a) any U.S. patents and/or patent applications (including provisional applications) listed in Appendix A; (b) any continuations, divisions, and claims of U.S. continuations-in-part thereof; (c) any patents which issue on any of the foregoing applications including patents resulting from extensions, reissues or re-examinations thereof; and (d) any and all foreign patents and/or patent applications resulting from or corresponding to the U.S. patents and/or patent applications described in (a), (b), or (c) above, which will be automatically incorporated in and added to this Agreement and shall periodically be added to Appendix A.
|
|
1.10
|
"PROCESS" or "PROCESSES" means any process, procedure or method that is covered in whole or in part by a VALID CLAIM contained in PATENT RIGHTS.
|
|
1.11
|
"PRODUCT" or "PRODUCTS" means any product or part thereof that is (a) covered in whole or in part by a VALID CLAIM contained in PATENT RIGHTS; or (b) is manufactured by using a PROCESS.
|
|
1.13
|
"SUBLICENSEE" means a third party to which LICENSEE has granted a sublicense in accordance with the terms of this Agreement to make, have made, use, lease, sell, import and/or provide LICENSED PRODUCTS.
|
|
1.14
|
"TECHNOLOGY" means the invention described in CURF Ref. 01-025, dated 8118/2000, entitled "Protein Jet Printing onto Solid Substrata."
|
|
1.16
|
"VALID CLAIM" means (a) a claim of an issued, unexpired patent which has not been held invalid or unenforceable by a final, un-appealable decision of a court or other governmental agency of competent jurisdiction and which has not been admitted to be invalid through reissue, disclaimer or otherwise; or (b) any claim of a pending patent application.
|
|
2.1
|
CURF hereby grants to LICENSEE, subject to the terms and conditions of this Agreement, the exclusive right and license for the FIELD OF USE in the TERRITORY to use TECHNOLOGY, to practice under PATENT RIGHTS, and to make, have made, use, lease, sell, provide and/or import LICENSED PRODUCTS until the end of the term for which PATENT RIGHTS are granted, all to the extent not prohibited by other patents, unless terminated earlier hereunder.
|
|
(a)
|
The reserved rights of CURF, for itself and for UNIVERSITY, to practice the licensed PATENT RIGHTS and use TECHNOLOGY for any NON-COMMERCIAL RESEARCH PURPOSES, including sponsored research and collaborations, and the right to extend these reserved rights to INVENTOR(S), any non-profit academic or research institution or organization, and any successor(s) of CURF or UNIVERSITY. LICENSEE agrees that, notwithstanding any other provisions of this Agreement, it hasno right to enforce the licensed PATENT RIGHTS against CURF, UNIVERSITY, or any institution or INVENTOR(S) that are granted rights m accordance with this Section 2.2.
|
|
(b)
|
Any non-exclusive license of TECHNOLOGY that CURF is required by law or regulation to grant to the GOVERNMENT or to a foreign country pursuant to an existing or future treaty with the United States of America.
|
|
(c)
|
Any rights of GOVERNMENT or any restrictions or obligations that may be imposed for any TECHNOLOGY or PATENT RIGHTS developed with the support of GOVERNMENT as provided in United States laws and regulations and in its contract(s) with CURF, UNIVERSITY and/or any of the INVENTOR(S).
|
|
2.3
|
The provisions of this Agreement shall not be construed in such a manner as to restrict the ability of CURF or that of its licensees or assigns to use TECHNOLOGY or to practice under PATENT RIGHTS outside of the FIELD OF USE or in the FIELD OF USE outside TERRITORY for any commercial or non-commercial purposes.
|
|
2.4
|
LICENSEE agrees that the right of publication of TECHNOLOGY shall reside with UNIVERSITY. CURF shall use its best efforts to provide a copy of each proposed publication to LICENSEE for pre-publication review at least thirty (30) days before submission to a publisher. If LICENSEE identifies potentially patentable subject matter in any such publication, and so notifies CURF, then CURF shall notify INVENTOR(S) and shall use its best efforts to delay submission and publication for up to a combined maximum of ninety (90) days or until a patent application has been filed for such subject matter, whichever occurs first. Such review will in no way be construed as a right to restrict such publication.
|
|
2.5
|
This Agreement, unless terminated earlier pursuant to Article 13, shall terminate on the expiration of the last to expire patent under PATENT RIGHTS, whereupon the exclusive licenses granted hereunder shall be fully paid and LICENSEE and SUBLICENSEES shall be free to develop, make, have made, use, sell, have sold, practice or provide LICENSED PRODUCTS without further duties or responsibilities to CURF.
|
|
2.6
|
LICENSEE shall have the right to enter into sublicensing agreements for the rights, privileges and license granted hereunder with respect to the use of TECHNOLOGY and the practice of PATENT RIGHTS within TERRITORY and in the FIELD OF USE provided that LICENSEE is not in default of its obligations hereunder. Upon any termination of this Agreement, SUBLICENSEE's rights shall also terminate, subject to Section 13.8 hereof. No sublicense shall relieve LICENSEE of any of its obligations under this Agreement. LICENSEE has no obligation to enter into any such sublicensing agreement.
|
|
2.7
|
LICENSEE agrees that any and all sublicenses granted by it shall be subject to thisAgreement in all respects and each such sublicense shall:
|
|
(b)
|
Include copies of Articles 2, 5, 7, 8, 9, 10, 11, 12, 13 and 15 of this Agreement and shall provide that the obligations of LICENSEE to CURF contained in such Articles shall be binding upon the SUBLICENSEE as if it were a party to this Agreement;
|
|
(d)
|
Contain a provision stating that CURF shall be an intended third-party beneficiary of such sublicense agreement.
|
|
2.8
|
LICENSEE agrees to forward to CURF a copy of any and all sublicenses (including, without limitation, all amendments and addenda) granted hereunder within thirty (30) days of execution by the parties thereto.
|
|
2.9
|
LICENSEE shall not receive from SUBLICENSEES anything of value in lieu of cash payments as consideration for any sublicense under this Agreement without the express prior written permission of CURF, such permission shall not be unreasonably withheld.
|
|
2.10
|
LICENSEE's failure to perform in accordance with any and all of these Sections relating to sublicenses with regard to a particular sublicense shall render such attempted sublicense void, shall constitute a material breach of this Agreement and shall be grounds for CURF to terminate this Agreement pursuant to Section 13.5 herein.
|
|
2.11
|
CURF shall have no obligation to provide LICENSEE with technical information concerning TECHNOLOGY or PATENT RIGHTS or to provide technical assistance in the development or commercialization of TECHNOLOGY or PATENT RIGHTS. In the event that LICENSEE requires technical assistance with respect to the activities conducted by LICENSEE pursuant to this Agreement, obtaining such technical assistance (whether from the INVENTOR(S) or otherwise) shall be the responsibility of LICENSEE and at the expense of LICENSEE.
|
|
3.1
|
LICENSEE shall use its best efforts to bring one or more LICENSED PRODUCTS to market through a thorough, vigorous and diligent program for exploitation of PATENT RIGHTS and to continue active, diligent marketing efforts for one or more LICENSED PRODUCTS throughout the life of this Agreement.
|
|
(a)
|
LICENSEE shall deliver to CURF within thirty (30) days of the EFFECTIVE DATE of this Agreement a commercialization plan showing the amount of money, number and kind of personnel, and time budgeted and planned for each phase of development of LICENSED PRODUCT.
|
|
4.1
|
For the rights, privileges and license granted hereunder, LICENSEE shall pay to CURFuntil expiration or termination of this Agreement the following:
|
|
(b)
|
LICENSEE and CURF agree to execute the convertible equity promissory note with a principal value of [***], attached hereto as APPENDIX D.
|
|
iii.
|
An Annual Minimum Royalty per year in the amount of [***] pay able on January 1, 2016, and on or before January 1 of each year thereafter during the term of this agreement
|
|
(e)
|
In addition to Running Royalties, [***] received from third parties, including SUBLICENSEES, in consideration for sublicensing rights to LICENSED PRODUCTS.
|
|
4.2
|
Any amount due to CURF as a result of each LICENSED PRODUCT made, having been made, used, sold, rented, leased, imported or provided pursuant to the license rights granted by this Agreement shall accrue at the time LICENSEE or SUBLICENSEE leases, bills, invoices, ships or receives payment, whichever shall occur first, for such
|
|
4.3
|
All payments due hereunder shall be paid in full, without deduction of taxes or other fees that may be imposed, except as otherwise provided in Section 1.7.
|
|
4.4
|
No multiple royalties shall be payable because any LICENSED PRODUCT, its manufacture, use, lease, provision or sale are or shall be covered by more than one issued patent or patent application in PATENT RIGHTS licensed under this Agreement.
|
|
4.5
|
Amounts payable to CURF hereunder shall be paid in United States dollars in Anderson, South Carolina, or at such other place as CURF may reasonably designate consistent with the laws and regulations controlling in any foreign country. If any currency conversion shall be required in connection with the payment of royalties hereunder, such conversion shall be made using the exchange rate reported in the Wall Street Journal on the last business day of the calendar reporting period to which such payments relate.
|
|
4.6
|
LICENSEE's failure to make any payment under this Article 4 shall be grounds forCURF to terminate this Agreement pursuant to Section 13.3.
|
|
4.7
|
Any undisputed amount owed by LICENSEE to CURF shall, if overdue, bear interest at a rate of five percent (5%) after sixty (60) days of the due date specified in the Agreement.. LICENSEE shall also pay all reasonable collection costs incurred by CURF in obtaining payment of past due amounts, including reasonable attorney's fees. The payment of such interest shall not foreclose CURF from exercising any other rights it may have as a consequence of the lateness of any payment.
|
|
5.2
|
No later than sixty (60) days after December 31 of each calendar year, LICENSEE shall provide to CURF a written annual progress report describing progress by LICENSEE and any SUBLICENSEES on research and development, regulatory approvals, manufacturing, sublicensing, marketing, and sales during the preceding twelve (12) month period ending December 31 and plans for the forthcoming year. If multiple technologies are covered by the license granted hereunder, the progress report shall provide the information set forth above for each technology . LICENSEE also shall provide any additional data CURF reasonably requires to evaluate LICENSEE's performance and compliance with the terms of this Agreement.
|
|
5.3
|
LICENSEE, within sixty (60) days after June 30 and December 31 of each year, shall submit to CURF a Royalty Report attached hereto as Appendix C. The first such Royalty Report shall be due within sixty (60) days after December 31st, 2011 and shall include all information since the Effective Date of this Agreement. With each Royalty Report submitted, LICENSEE shall pay to CURF the royalties due and payable under this Agreement. If no royalties shall be due, LICENSEE shall so report.
|
|
5.4
|
LICENSEE, within ninety (90) days following the close of its fiscal year, shall provide to CURF LICENSEE's financial statements for the preceding fiscal year including, at a minimum, a balance sheet and income statement.
|
|
5.5
|
LICENSEE shall keep full, true and accurate books of account containing all particulars that may be necessary for the purpose of showing the amount payable to CURF hereunder.The books of account shall be kept at LICENSEE's principal place of business or the principal place of business of the appropriate division of LICENSEE to which this Agreement relates. The books and the supporting data shall be open at all reasonable times for five (5) years following the end of the calendar year to which they pertain to the inspection of CURF or its agents for the purpose of verifying LICENSEE's royalty statement or compliance in other respects with this Agreement. Should such inspection lead to the discovery of a shortage equal to or greater than five percent (5%) of the total amount due in the period under audit, LICENSEE shall promptly reimburse CURF for the full cost of such inspection, the shortage and an interest of five percent (5%) on any shortage
due.
|
|
6.1
|
CURF shall , be responsible for the maintenance of any and all applications and patents included in the PATENT RIGHTS. CURF shall consult with LICENSEE as to the maintenance of such applications and patents and shall furnish to LICENSEE copies of documents relevant to any such maintenance. CURF and LICENSEE shall cooperate fully in determining, in a timely manner, the countries in which patent protection shall be maintained. Each PARTY shall provide to the other prompt notice as to all matters that come to its attention and which may affect the maintenance of any such patents. In particular, LICENSEE will immediately notify CURF if LICENSEE or a SUBLICENSEE does not qualify as a "small entity" as provided by the United States Patent and Trademark Office.
|
|
6.2
|
Payment of all fees and costs relating to the preparation, filing, prosecution and maintenance of PATENT RIGHTS shall be reimbursed by the LICENSEE, whether such fees and costs were incurred before or after the date of this Agreement. Such reimbursements for expenses accrued prior to the EFFECITVE DATE, as detailed in APPENDIX E are due according to the following schedule:
|
|
(a)
|
Fifty percent (50%) of patent fees related to PATENT RIGHTS accrued prior to the EFFECTIVE DATE are due on the EFFECTIVE DATE.
|
|
(b)
|
The remaining fifty percent (50%) of patent fees related to PATENT RIGHTSaccrued prior to the EFFECTIVE DATE are due on or before June 301 2011.
|
|
6.3
|
In the event LICENSEE elects to discontinue maintenance of any patent issued thereon, or if LICENSEE elects not to continue to pay the patent expenses under the PATENT RIGHTS, in any country, LICENSEE shall notify CURF no later than thirty (30) days prior to any applicable statutory bar date or response due date. From and after the date of such notice:
|
|
(a)
|
LICENSEE and its SUBLICENSEES shall have no rights, privileges or license in the specified country(ies) under this Agreement;
|
|
(b)
|
LICENSEE shall have no responsibility for expenses incurred in preparation, filing, prosecution and maintenance of PATENT RIGHTS in the specified country(ies);
|
|
(c)
|
LICENSEE agrees that it will not thereafter manufacture, use, sell or provideLICENSED PRODUCTS in the specified country(ies); and
|
|
6.4
|
All patent applications and issued patents contained in PATENT RIGHTS shall be owned by UNIVERSITY or CURF.
|
|
7.1
|
Each PARTY shall inform the other PARTY promptly in writing of any alleged infringement of PATENT RIGHTS by a third party and any available evidence thereof.
|
|
7.2
|
During the term of this Agreement, LICENSEE shall have the first right, but shall not be obligated to prosecute at its own expense, all infringements or misappropriations of TECHNOLOGY. LICENSEE may, for such purposes, include CURF as party plaintiff, if necessary, without expense to CURF. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of CURF, which consent shall not unreasonably be withheld. The total cost of any such infringement or misappropriation action commenced or defended solely by LICENSEE shall be borne by LICENSEE, and LICENSEE shall keep any recovery or damages for past infringement or misappropriation derived therefrom subject to the payment of a percentage on any recoveries net of costs and expenses as an "other payment" in accordance with Section 4. l(e). LICENSEE shall indemnify CURF against any order for costs that may be made against CURF
in such proceedings.
|
|
7.3
|
If within three (3) months after having been notified of any alleged infringement, LICENSEE is unsuccessful in persuading the alleged infringer to desist and has not brought or is not diligently pursuing an infringement action or if LICENSEE notifies CURF at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, CURF shall have the right, but shall not be obligated,to prosecute at its own expense all infringements or misappropriations of TECHNOLOGY and CURF may, for such purposes, include LICENSEE as a party plaintiff in any such suit, without expense to LICENSEE. The total cost of such infringement action commenced or defended solely by CURF shall be borne by CURF and CURF shall keep any recovery or damages for past infringement derived therefrom.
|
|
7.4
|
In the event that LICENSEE shall undertake the enforcement and/or defense of the TECHNOLOGY by litigation, LICENSEE may withhold up to fifty percent (50%) of the payments otherwise due CURF under Article 4 hereunder and apply the same toward payment of up to half of LICENSEE's expenses, including reasonable attorney 's fees, in connection therewith. LICENSEE shall modify the Royalty Report form to reflect any withholdings. Any recovery of damages by LICENSEE for each such suit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of LICENSEE relating to such suit, and next toward reimbursement of CURF for any payments under Article 4 past due or withheld and applied pursuant to this Section 7.4. LICENSEE shall keep the balance remaining from any such recovery subject to the payment of a percentage as an "other payment" in accordance with Section 4.1(e).
|
|
7.5
|
In any infringement or misappropriation suit that either PARTY may institute to enforce the PATENT RIGHTS pursuant to this Agreement, the other PARTY hereto shall, at the request and expense of the PARTY initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens and the like.
|
|
7.6
|
LICENSEE, during the exclusive period of this Agreement, shall have the sole right in accordance with the terms and conditions herein to sublicense any alleged infringer for the FIELD OF USE for future use of the PATENT RIGHTS. Any upfront fees as pm1 of such a sublicense shall be treated pursuant to Article 4.
|
|
8.1
|
LICENSEE shall at all times during the term of this Agreement and thereafter, indemnify, defend and hold INVENTOR(S) and CURF, UNIVERSITY, and their trustees, directors, officers, employees and affiliates harmless against all claims, proceedings, demands and liabilities of any kind whatsoever, including legal expenses and reasonable attorney's fees related to third party claims, arising out of injury, including death, to any person or persons or out of any damage to property, resulting from the production, manufacture, sale, use, lease, consumption, provision or advertisement of the LICENSED PRODUCTS or arising from any obligation of LICENSEE hereunder, excepting only claims that PATENT RIGHTS infringe third party intellectual property.
|
|
8.2
|
LICENSEE shall obtain and carry in full force and effect commercial , general liability insurance that shall protect LICENSEE, CURF, INVENTOR(S) and UNIVERSITY with respect to events covered in Section 8.1. Such insurance shall be written by a reputable insurance company authorized to do business in the state of South Carolina, shall list CURF, INVENTOR(S) and UNIVERSITY as additional named insureds thereunder, shallbe endorsed to include product liability coverage and shall require thirty (30) days written notice to be given to CURF prior to any cancellation or material change thereof. The limits of such insurance shall not be less than one million U.S. dollars ($1,000,000.00) per occurrence with an aggregate of two million U.S. dollars ($2,000,000.00) for personal injury or death and not be less than one million U.S. dollars ($1,000,000.00) per occurrence with an aggregate of two million U.S. dollars
($2,000,000.00) for property damage. LICENSEE shall provide CURF with Certificates of Insurance evidencing the same within thirty (30) days of the EFFECTIVE DATE of this Agreement.
|
|
8.3
|
Except as otherwise expressly set forth in this Agreement, INVENTOR(S) and CURF, UNIVERSITY, and their trustees, directors, officers, employees and affiliates make no representations and extend no warranties of any kind, either express or implied, including but not limited to warranties of merchantability, fitness for a particular purpose, validity of PATENT RIGHTS claims, issued or pending, and the absence of latent or other defects, whether or not discoverable. Nothing in this Agreement shall be construed as a representation made or warranty given by CURF that the practice by LICENSEE of the license granted hereunder shall not infringe the patent, copyright, trademark or other intellectual property rights of any third party. In no event shall INVENTOR(S) and CURF, UNIVERSITY, and their trustees, directors, officers, employees, and affiliates be liable for incidental or consequential damage of any kind, including economic damage or injury
to property and lost profits, regardless of whether INVENTOR(S), CURF or UNIVERSITY shall be advised, shall have other reason to know or in fact shall know of the possibility.
|
|
8.4
|
In no event shall LICENSEE, its directors, officers, employees, or affiliates be liable for incidental or consequential damages arising out of any of the te1ms or conditions of this Agreement, or with respect to their performance or lack thereof.
|
|
8.5
|
CURF shall have no liability to LICENSEE for any use of TECHNOLOGY or PATENT RIGHTS by a third party (including but not limited to UNIVERSITY and its employees) that is not specifically authorized in writing by CURF, and such use shall not constitute a breach of this Agreement.
|
|
9.1
|
It is understood that CURF is subject to United States laws and regulations controlling the export of technical data, computer software, laboratory prototypes and other commodities (including the Arms Export Control Act, as amended and the Export Administration Act of 1979), and that its obligations hereunder are contingent on compliance with applicable United States export laws and regulations. The transfer of certain technical data and commodities may require a license from the cognizant agency of GOVERNMENT and /or written assurances by LICENSEE that LICENSEE shall not export data or commodities to certain foreign countries without prior approval of such agency.CURF neither represents that a license shall not be required nor that, if required, it shall be issued.
|
|
10.1
|
LICENSEE and its employees, agents and contractors shall maintain in confidence all CONFIDENTIAL INFORMATION furnished to LICENSEE or its employees, agents or contractors by any of the INVENTOR(S), CURF or UNIVERSITY or by persons, offices or facilities of CURF or UNIVERSITY in connection with this Agreement. Neither LICENSEE nor any of its respective employees, agents or contractors shall use CONFIDENTIAL INFORMATION for any purpose except in connection with the exercise of the license granted hereunder. Only those employees, agents and contractors of LICENSEE who are subject t0 a preexisting, written obligation of confidentiality shall be assigned to perform duties that involve the use of or require access to such CONFIDENTIAL INFORMATION. LICENSEE shall inform (and shall require its SUBLICENSEES to inform) all of its employees, agents and contractors who are assigned to perform duties involving the use or exploitation of any CONFIDENTIAL
INFORMATION of the confidentiality obligations created by this Agreement and shall assure their agreement to be bound by such confidentiality obligations prior to disclosing to such employees, agents and contractors any CONFIDENTIAL INFORMATION.
|
|
10.2
|
Notwithstanding any provision contained in this Agreement, LICENSEE shall not be required to maintain in confidence any of the following information:
|
|
(b)
|
Information which, after disclosure to LICENSEE, becomes part of the public knowledge by publication or otherwise, except by breach of this Agreement;
|
|
(c)
|
Information which was lawfully in LICENSEE's possession (as reflected in its written records) at the time of disclosure by the disclosing party, and which was not acquired, directly or indirectly, from INVENTOR(S), CURF or the UNIVERSITY;
|
|
(d)
|
Information which the LICENSEE can demonstrate by written documents is the result of its own research and development independent of disclosures hereunder;
|
|
(e)
|
Information which the LICENSEE receives from third parties, provided such information was not obtained by such third parties from INVENTOR(S), CURF or the UNIVERSITY on a confidential basis and that LICENSEE has no notice of that such information is confidential; and
|
|
(f)
|
Information which LICENSEE is required to disclose by law or pursuant to the order of a court or other tribunal of competent jurisdiction, provided LICENSEE gives CURF written notice of such order prior to the disclosure thereof and gives CURF an opportunity to seek a protective order from such court or tribunal.
|
|
10.3
|
LICENSEE shall not use the names, trademarks, or service marks of CURF or the UNIVERSITY,nor any adaptation thereof, nor the names of any of their employees or anyINVENTOR(S), in any advertising, promotional or sales literature without prior written consent obtained from CURF except that LICENSEE may state that it is licensed by CURF under one or more of the patents and/or applications comprising the PATENT RIGHTS. Any use of the names of CURF, UNIVERSITY, their employees or any INVENTOR(S) shall be limited to statements of fact and shall not imply endorsement of LICENSEE's products or services.
|
|
10.4
|
CURF shall not use the names, trademarks, or service marks of LICENSEE, nor any adaptation thereof, nor the names of any of its employees, in any advertising, promotional or sales literature without prior written consent obtained from LICENSEE. Any use of the names of LICENSEE or its employees shall be limited to statements of fact.
|
|
10.5
|
CURF shall maintain confidentially of information contained in reports received by the LICENSEE, which is clearly marked as confidential, to the extent permitted by state and federal law.
|
|
11.1
|
Neither this Agreement nor any obligation or right hereunder is assignable by LICENSEE except with written approval by CURF; provided however that LICENSEE, upon written notice to CURF, may assign this Agreement to a successor in ownership of all or substantially all of its business assets, provided such successor expressly agrees to assume LICENSEE'S obligations under this Agreement.
|
|
12.1
|
All disputes arising out of or related to this Agreement or the performance, enforcement, breach or termination hereof, and any remedies relating thereto, shall be construed, governed, interpreted and applied in accordance with the laws of the United States of America and of the State of South Carolina. The South Carolina State Courts of Pickens County, South Carolina (or, if there is exclusive federal jurisdiction, the United States District Court for South Carolina) shall have exclusive jurisdiction and venue over any dispute arising out of this Agreement, and LICENSEE consents to the jurisdiction of such courts, 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.
|
|
12.2
|
Notwithstanding the foregoing, nothing in this Article 12 shall be construed to waive rights or timely performance of any obligations existing under this Agreement.
|
|
13.1
|
Upon any termination of this Agreement, excluding termination due to expiration of patents pursuant to Section 2.5, all rights, privileges and license granted hereunder shall terminate and all rights to TECHNOLOGY and PATENT RIGHTS shall revert to CURF and/or UNIVERSITY.
|
|
13.2
|
If LICENSEE shall cease to carry on its business, this Agreement shall terminate upon notice by CURF.
|
|
13.3
|
Should LICENSEE fail to make any payment whatsoever due and payable to CURF hereunder, CURF shall have the right to terminate this Agreement by providing notice of intent to terminate to LICENSEE. The Agreement shall terminate forty-five (45) days from notice unless LICENSEE shall make all such payments to CURF within the forty five (45) day period or CURF shall provide LICENSEE with a written extension thereto. Upon the expiration of the forty-five (45) day period or granted extension, if LICENSEE shall not have made all such payments to CURF, this Agreement shall automatically terminate.
|
|
13.4
|
If LICENSEE shall at any time become insolvent or make a general assignment for the benefit of creditors or if a petition of bankruptcy or any reorganization shall be commenced by, against or in respect of LICENSEE and shall remain un-dismissed for more than ninety (90) days, this Agreement shall automatically terminate.
|
|
13.5
|
Upon any material breach or default of this Agreement by LICENSEE, other than those occurrences set out in Sections 13.2, 13.3, and 13.4 hereinabove, which shall always take precedence in that order over any material breach or default referred to in this Section 13.5,CURF shall have the right to terminate this Agreement effective on forty-five (45) days from receipt of notice to LICENSEE or CURF shall provide LICENSEE with a written extension thereto. Such termination shall be automatically effective unless LICENSEE shall have cured any such material breach or default prior to the expiration of the forty-five (45) day period.
|
|
13.6
|
LICENSEE shall have the right to terminate this Agreement at any time on six (6) months notice to CURF and upon payment of a termination fee equal to the amount of the next Annual Minimum Royalty and all amounts due CURF through the effective date of termination.
|
|
13.7
|
Upon termination of this Agreement for any reason, nothing herein shall be construed to release either PARTY from any obligation that matured prior to the effective date of such termination; and Articles 1, 8, 9, 10, 13.7, 13.8, and 15, excluding 15.1, shall survive any such termination. Notwithstanding the foregoing, the license rights granted to CURF and UNIVERSITY pursuant to section 15.1, shall survive termination if such improvements or modifications are being used as part of an active research project at time of termination. Such license rights will continue through the end of the project. LICENSEE and any SUBLICENSEES thereof, may, however, after the effective date of such termination, complete and sell all LICENSED PRODUCTS in the process of manufacture at the time of such termination, provided that LICENSEE shall make the payments to CURFas required by Article 4 of this Agreement and shall
submit the reports required by Article5 hereof.
|
|
13.8
|
Upon termination of this Agreement for any reason, any SUBLICENSEE not then in default shall have the right to seek a license from CURF. CURF agrees to negotiate such licenses in good faith under reasonable, and substantially similar terms and conditions.
|
|
14.1
|
Any payment, notice or other communication pursuant to this Agreement shall be sufficiently made or given on the date of receipt if sent to such PARTY by certified U.S. Postal Service Express Mail, or by using an express courier service (such as Fed Ex, DHL, etc.) addressed to it at the address below or as it shall designate by written notice given to the other PARTY:
|
|
14.2
|
Payments may be made by wire transfer rather than by certified mail. If payment is made by wire transfer, the wire transfer fee must be added to payment and written notice that payment was made by wire transfer must be made in accordance with Section 14.1. Wire transfers should be made to the following account:
|
|
15.1
|
During the term of this Agreement, LICENSEE shall fully disclose to CURF all improvements and modifications to TECHNOLOGY and LICENSED PRODUCTS which are developed wholly or partly by LICENSEE or its SUBLICENSEES and their employees, contractors, agents and subsidiaries. The UNIVERSITY and CURF shall have a non-exclusive non -transferable royalty-free license to utilize such improvements and modifications for NON-COMMERCIAL RESEARCH PURPOSES. LICENSEE hereby acknowledges that the provisions of this paragraph shall not in any way inhibit or detract from the rights of ownership CURF or UNIVERSITY may enjoy in any improvements or modifications to the TECHNOLOGY and LICENSED PRODUCTS developed in whole or in part by INVENTOR(S) or other employees of CURF or the UNIVERSITY.
|
|
15.2
|
Each PARTY expressly acknowledges that the relationship between the PARTIES to this Agreement is that of independent contractors, and not agents, employees or representatives of the other. This Agreement shall not be deemed to create a partnership, joint venture or principal-and-agent relationship between CURF and LICENSEE or UNIVERSITY and LICENSEE. Except as expressly permitted in this Agreement, neither PARTY shall have the authority to bind the other to any agreement or obligation whatsoever, nor shall either PARTY represent that it has any such right or authority to any third party.
|
|
15.3
|
This Agreement constitutes the entire and only agreement between the PARTIES as to the subject matter hereof and all other prior negotiations, representations, agreements and warranties are superseded in totality by this Agreement. No agreements altering or supplementing the terms hereof shall be made except by a written document signed by both PARTIES. To become effective, this Agreement must be signed by LICENSEE within twenty (20) calendar days of signature by CURF.
|
|
15.4
|
If any part of this Agreement is for any reason found to be invalid or unenforceable, all other parts nevertheless remain enforceable.
|
|
15.5
|
LICENSEE and its SUBLICENSEES shall mark all products covered by PATENT RIGHTS with patent numbers in accordance with the statutory requirements in the country(ies) of manufacture, use and sale, and pending the issue of any patents, LICENSEE and its SUBLICENSEES shall mark the products, "Patent Pending," or the foreign equivalent as appropriate.
|
|
15.6
|
The failure of either PARTY to assert a right hereunder or to insist upon compliance with any term or condition of this Agreement shall not constitute a waiver of that right or excuse a subsequent and/or similar failure to perform any such term or condition by the other PARTY.
|
|
15.7
|
Upon the request of the other PARTY, each PARTY shall execute and deliver such additional documents and perform such other acts as the other PARTY may reasonably request and as may be necessary to affect the purposes and intent of this Agreement.
|
|
15.8
|
All titles and article headings contained in this Agreement are inserted only as a matter of convenience and reference and do not define, limit, extend or describe the scope of this Agreement or the intent of any of its provisions.
|
|
CLEMSON UNIVERSITY RESEARCH
FOUNDATION
|
Organovo, Inc.
|
|||
| By | /s/ Vincie C. Albritton | By | /s/ Keith Murphy | |
| Name | Vincie C. Albritton | Name | Keith Murphy | |
| Title | Interim Executive Director | Title | CEO | |
| Date | 5/2/2011 | Date | 5/2/2011 | |
|
Company/Licensee:
|
|
|
CURF Agreement ID:
|
|
Name:
|
|||
|
Title:
|
|||
|
Address:
|
|||
| Telephone: | Fax: | ||
| Email: | |||
| Web site: | |||
|
Name:
|
|||||
|
Address:
|
|||||
| City: | State | Zip Code | |||
| Telephone: | Fax: | ||||
|
Fiscal Year
|
|||||
|
Name of Firm:
|
||||||
|
Address:
|
||||||
| City: | State | Zip Code | ||||
|
Telephone:
|
||||||
|
Contact:
|
||||||
|
Who is responsible for the calculation of royalties due?
|
|
|
Does this individual have a copy of the current license agreement?
|
|
|
What procedures are performed in calculating royalties?
|
|
|
Is a second review performed?
|
|
Have there been any changes to management in the prior twelve (12) months?
|
| Authorized Signature | Printed Name | ||
| Title | Date |
| Report Period: |
Beginning date:
|
Ending date: |
|
Were any new licensed products added to your inventory?
|
|
|
Did the company have its first commercial sale?
|
|
|
If so, date of first commercial sale.
|
|
a. If not, please submit a progress towards commercialization update report.
|
|
2. Di d the company grant its first sublicense?
|
|
a. If so, date of first sublicense.
|
|
3. Total amount invoiced for licensed products /processes?
|
|
4. Total amount invoiced for licensed services?
|
|
A. Annual minimum royalty amount due this license year
|
$ |
|
B. Less royalties previously paid this license year:
|
| Annual minimum less payments | $ |
|
Product Number (SKU)
|
Product, Process, or Service Description
|
Product
Manufactured
|
Country
|
Units Sold or
Leased
|
Sales Price per Unit
|
Gross Sales
(US$)
|
| Total gross sales | $ |
| I. | Sales, Use, Occupation and Excise Tax | $ | ||
| 2. | Transportation | $ | ||
| 3. | Discounts | $ | ||
| 4. |
Returns and Allowances
|
$ |
| Total net sales | $ |
|
Royalty rate
|
% |
|
Royalty due this period
|
$ |
| D. | The greater of remaining annual minimum /royalty amount due. | $ | |
| E. | Sublicensing Fees | $ | |
| F. | Total amount due to CURF (D+E) | $ |
| Authorized Signature | Printed Name | ||
| Title | Date |
|
Vendor/Provider
|
TechiD
|
Patent Serial No
|
Expense Type
|
Vendor
Invoice Date
|
Paid to Date by
CURF
|
Balance
Remaining
|
|
Dority & Manning
|
01-025
|
Patent Search
|
02/28/2001
|
1308.45
|
0.00
|
|
|
Dority & Manning
|
01-025
|
Patent Search
|
07/31/2001
|
120.25
|
0.00
|
|
|
Dority & Manning
|
01-025
|
Patent Search
|
03/31/2003
|
74.19
|
0.00
|
|
|
Dority & Manning
|
01-025
|
60/474,469
|
Provisional Patent Filings
|
04/30/2003
|
1295.63
|
0.00
|
|
Dority & Manning
|
01-025
|
60/474,469
|
Provisional Patent Filings
|
05/31/2003
|
7135.64
|
0.00
|
|
Dority & Manning
|
01-025
|
60/474,469
|
Provisional Patent Filings
|
08/31/2003
|
144.51
|
0.00
|
|
Dority & Manning
|
01-025
|
10/666,836
|
US Patent Legal Fees
|
08/31/2003
|
170.00
|
0.00
|
|
Dority & Manning
|
01-025
|
10/666,836
|
US Patent Legal Fees
|
09/30/2003
|
3581.60
|
0.00
|
|
Dority & Manning
|
01-025
|
10/666,836
|
US Patent Legal Fees
|
01/31/2004
|
208.36
|
0.00
|
|
Dority & Manning
|
01-025
|
10/666,836
|
US Patent Legal Fees
|
02/29/2004
|
1027.51
|
0.00
|
|
Dority & Manning
|
01-025
|
10/666,836
|
US Patent Lega l Fees
|
03/31/2004
|
2110.58
|
0.00
|
|
Dority & Manning
|
01-025
|
PCT/US2004/011276
|
Foreign Fees
|
04/30/2004
|
2659.10
|
0.00
|
|
Dority & Manning
|
01-025
|
10/666,836
|
US Patent Legal Fees
|
01/31/2005
|
1304.56
|
0.00
|
|
Dority & Manning
|
01-025
|
10/666,836
|
US Pa tent Lega l Fees
|
05/31/2005
|
1217.63
|
0.00
|
|
Dority & Manning
|
01-025
|
10/666,836
|
Miscellaneous Legal Fees
|
06/30/2008
|
720.00
|
0.00
|
|
Computer Packages
Inc.
|
01-025
|
10/666,836
|
Maintenance/Annuity Fees
|
08/31/2009
|
715.00
|
0.00
|
|
$ 23,793.01
|
-
|
|||||
|
COMPANY:
|
||
|
By:
|
/s/Keith Murphy | |
|
ORGANOVO, INC.
|
||
|
By:
|
/s/Keith Murphy | |
|
PURCHASER:
|
||
|
By:
|
/s/Vincie C. Albritton | |
|
Vincie Albritton
|
||
|
Interim Executive Director
|
||
| Name | Loan Amount |
| Clemson University Research Foundation | $[***] |
| This ‘8-K’ Filing | Date | Other Filings | ||
|---|---|---|---|---|
 | ||||
| 1/1/16 | ||||
| 1/1/15 | ||||
| 1/1/14 | ||||
| Filed on: | 2/13/12 | |||
| For Period End: | 2/8/12 | 8-K/A | ||
| List all Filings | ||||