{"id":42472,"date":"2015-09-17T11:25:58","date_gmt":"2015-09-17T16:25:58","guid":{"rendered":"https:\/\/content.findlaw-admin.com\/ability-legal\/contracts\/uncategorized\/license-agreement-sarasep-inc-and-investors.html"},"modified":"2015-09-17T11:25:58","modified_gmt":"2015-09-17T16:25:58","slug":"license-agreement-sarasep-inc-and-investors","status":"publish","type":"corporate_contracts","link":"https:\/\/corporate.findlaw.com\/contracts\/operations\/license-agreement-sarasep-inc-and-investors.html","title":{"rendered":"License Agreement &#8211; Sarasep Inc. and Investors"},"content":{"rendered":"<pre>\n                                LICENSE AGREEMENT\n\n         This agreement, entered into and effective as of the first day of\nSeptember, 1994, by and between Sarasep, Inc., a corporation of the state of\nNevada, having a place of business at 1600 Wyatt Drive, Suite 10, Santa Clara,\nCA 95054 (hereinafter \"LICENSEE\"), and a group of inventors consisting of Prof.\nDr. Gunther Bonn, Bahnhof Umgebung Nr. 3, A-6170 Zirl, Austria, Dr. Christian\nHuber, Ulmenstrasse 65, A-6064 Rum, Austria, and Dr. Peter Oefner,\nUnterbergerstrasse 19a\/5, A-6020 Innsbruck, Austria, presently at 1300 Oak Creek\nDrive, Apartment 221, Palo Alto, California US 94306-2008, inventors represented\nby Prof. Dr. Bonn (hereinafter \"LICENSOR\"). Prof. Dr. Bonn will be the interface\nfor all contact between LICENSEE AND LICENSOR unless directed otherwise by Dr.\nBonn.\n\n                                   WITNESSETH:\n\n         WHEREAS, LICENSOR is the owner of polymer technology and is the owner\nof patent applications set forth in Schedule A appended to this Agreement\nrelating to nonporous, chromatographic, polymer resins;\n\n         WHEREAS, LICENSEE wishes to obtain and Licensor is willing to grant a\nexclusive, royalty-bearing license under this technology.\n\n         NOW, THEREFORE, the parties intending to be legally bound agree as\nfollows:\n\nARTICLE 1 - DEFINITIONS\n\n         1.01 \"TECHNOLOGY RIGHTS\" shall mean the technology and\/or patents\napplications or patents issued from said applications listed in Schedule A, or\nas later amended by written agreement of the parties.\n\n         1.02 \"PRODUCTS\" shall mean columns and bulk material listed in Schedule\nfor the separation and\/or solid phase clean-up of DNA, DNA fragments or\noligonucleotides.\n\n         1.03 \"NET SALES\" shall mean the actual gross amount of the invoices\ncovering all of LICENSEE's sales of PRODUCTS to customers other than affiliates,\nless cash discounts and rebates actually given, duties, returns and free\nreplacements. NET SALES of PRODUCTS used by LICENSEE or AFFILIATES shall be the\nhighest price paid during the reporting period by another to LICENSEE or any\nAFFILIATE for such PRODUCTS. In the event the NEW SALES price of PRODUCTS sold\ncannot be reasonably determined, the NET SALES price shall be the cost of\nmanufacture plus 300% of the cost of manufacture as determined by normal\naccounting practices. In the event of sales or transfer to an AFFILIATE for\neventual sales to an end-user or an intermediary, the royalty shall be paid by\nLICENSEE based on the NET SALES by the AFFILIATE to the end-user or\nintermediary.\n\n         1.04 \"AFFILIATE\" shall mean any entity in which at least forty-nine\npercent (49%) of the stock normally entitles to vote for the election of\ndirectors is directly or indirectly owned or controlled by LICENSEE.\n\nARTICLE 2 - GRANT\n\n\n\n\n         LICENSOR hereby grants to LICENSEE, and LICENSEE hereby accepts,\nsubject to the terms and conditions set forth in this Agreement, a exclusive\nlicense under the TECHNOLOGY RIGHTS to make use and sell PRODUCTS to LICENSEE's\ncustomers for PRODUCTS purchased from LICENSEE, provided that only to the extent\nthat LICENSEE has paid royalties due to LICENSOR under this Agreement.\n\n         This Agreement is for columns sold to affiliates, users, distributors\nor instrument manufacturers or for bulk media sold to affiliates or directly to\nHPLC users for DNA separations. Bulk media shall not be sold to column\nmanufacturers or instrument manufacturers unless by mutual agreement of LICENSEE\nAND LICENSOR.\n\n         This Agreement covers the sale and distribution of nonporous columns or\nmedia for DNA separations as shown in Schedule A. Sale of HPLC instrumentation\nemploying said columns or shall require a separate agreement to determine the\nterms of royalty payment to LICENSOR. Should LICENSOR or its assigns not pursue\nsale and distribution of HPLC instrumentation for DNA separations, it is\nunderstood that LICENSOR shall attempt to negotiate agreement or agreements with\none or more instrument manufacturers for the sale and distribution of HPLC\ninstrumentation DNA separations using the technology as shown in Schedule A. It\nis also understood that LICENSOR shall have the right to negotiate an agreement\nwith an instrument manufacturer, through mutual agreement of LICENSOR AND\nLICENSEE.\n\nARTICLE 3 - MARKING\n\n         LICENSEE shall mark and label product literature or packages for the\nPRODUCTS with the following legend:\n\n         This product is subject to one or more US or World patent applications.\n\n         When patent applications have been granted the LICENSEE shall mark and\nlabel product literature or packages for the PRODUCTS with the following legend\nwhere x denotes the patent number.\n\n         The Purchaser is entitled to utilize this product under Patent Number x\nfor the separation of DNA fragments.\n\n         In addition, all literature, product packages or performance sheets\nshall carry relevant citations of the inventors. The list of citations is shown\nin Schedule A and shall be updated by mutual agreement of LICENSOR and LICENSEE.\n\nARTICLE 4 - PAYMENTS AND REPORTS\n\n         4.01 For the rights granted under this Agreement, LICENSEE shall pay to\nLICENSOR as licensing fee, ** for every column for the first ** columns sold to\nusers. LICENSOR shall provide packing material for said columns. The first\nmaterial for packing columns shall be available starting January 9, 1995. The\nLicensee fee shall be paid quarterly for only those columns that have been\nactually sold.\n\n         4.02 For the rights granted under this Agreement, LICENSEE shall pay to\nLICENSOR as a royalty ** of NET SALES of columns and bulk media sold beyond the\nfirst ** columns. A minimum royalty payment of ** per year shall be paid on a\nquarterly basis. Royalty payments shall be effective starting January 1, 1995,\nbut amount of royalty payment shall be deducted from licensing fee until the\nfirst ** columns have been sold.\n\n\n                                       2\n\n\n         4.03 LICENSEE shall make written reports to LICENSOR within sixty (60)\ndays after the end of each calendar quarter during the term of this Agreement.\nEach report shall state the net sales of the PRODUCT during the calendar\nquarter. The report shall also set forth the manner in which the license fee and\nroyalty has been computed. The license fee and royalty for PRODUCTS sold during\neach calendar quarter shall be due and payable with the report for that quarter.\n\n         4.04 LICENSEE shall maintain sufficiently detailed book and records for\nthe PRODUCT sold or used by LICENSEE and AFFILIATES to enable LICENSOR to verify\nthe payments made to LICENSOR by LICENSEE. LICENSEE shall permit an accountant,\nappointed by LICENSOR and reasonably acceptable to LICENSEE, to inspect, at\nreasonable times and upon reasonable notice, but not to exceed once per year,\nthe book and records of licensee relating to the sale of PRODUCT. The accountant\nshall report to LICENSOR only whether the amounts reported and paid to LICENSOR\nby LICENSEE are accurate. In no event, however, shall an examination of\nLICENSEE's book be made for a period prior to three (3) years before the date\nsuch audit is requested by LICENSOR. In the event the accountant reports to\nLICENSOR that LICENSEE has underpaid the amounts due to LICENSOR by more than\nten percent (10%), then LICENSEE shall bear the costs of such audit.\n\n         4.05 LICENSEE shall pay all reasonable costs for US and Europe patent\ncosts and shall make reasonable efforts to argue the prosecution of the\napplication to the appropriate patent examiners. LICENSEE shall have the right\nto pursue patent rights in any other country that LICENSEE determines to be\ncommercially in the best interest of LICENSEE. LICENSEE shall inform LICENSOR of\nall steps of prosecution and defense of the patent applications or patents\nthereof. Should LICENSEE intend to abandon or assign any application or any part\nthereof, LICENSEE will provide the possibility for LICENSOR to acquire said\napplications or parts thereof. LICENSOR shall be responsible for the\nreassignment costs. LICENSOR will retain a non-exclusive license.\n\nARTICLE 5 - PATENTS AND TECHNOLOGY\n\n         5.01 LICENSOR shall provide reasonable support to LICENSEE of technical\ninformation and other information to allow LICENSEE to argue the prosecution of\nthe various patent applications before the patent examiners.\n\n         5.02 LICENSEE shall pay for patents costs as set forth in Article 4\nabove.\n\n         5.03 LICENSOR has assigned patent rights to LICENSEE in accordance to\ndocument signed prior to US patent application and World PCT patent application\nand specific country and Europe applications.\n\n         5.04 LICENSOR AND LICENSEE both agree to keep confidential synthesis or\nmanufacturing procedures except to the extent required in journal publications\nor patent applications. LICENSOR and LICENSEE both agree that synthesis\ndescriptions in journals or other publications shall be stated in general terms\nand not state key manufacturing details.\n\nARTICLE 6 - TERM AND TERMINATION\n\n         6.01 In the event that LICENSEE is able to obtain European and\/or US\npatent rights, this Agreement shall remain in effect for twenty (20) years. In\nthe event that LICENSEE is not able to obtain either European or US patent\nrights, this Agreement shall be in effect for five (5) years.\n\n\n                                       3\n\n\n         6.02 LICENSEE may terminate the Agreement and the licenses granted\nunder this Agreement by giving LICENSOR three (3) months prior written notice of\nLICENSEE's intention to terminate.\n\n         6.03 LICENSOR, at it discretion, may terminate the Agreement for one of\nthe following reasons by giving notice to LICENSEE:\n\n         (1) If there is a proceeding commenced against LICENSEE under any\nbankruptcy act or under any present or future law for relief of debtors, or a\nreceiver or trustee is appointed for LICENSEE or LICENSEE's asset, or an action\nor proceeding is commenced to dissolve LICENSEE, or LICENSEE makes an assignment\nfor the benefit of creditors or ceases to carry on business for any reason; or\n\n         (2) If LICENSEE fails to perform or observe any of the agreements,\nprovisions, duties or obligations under the Agreement such as the timely\nreporting and payment of royalties, and does not remedy the failure within\nthirty (30) days after receipt of notice from LICENSOR, provided, however, that\nrepeated failures by LICENSEE shall constitute an independent basis for LICENSOR\nto terminate this Agreement.\n\n         6.04 The termination of the Agreement shall not prejudice any rights or\nremedies which shall have accrued to either party prior to the date of such\ntermination.\n\n         6.05 LICENSOR shall keep confidential all technology manufacturing\nprocesses. Confidentiality shall survive this agreement for a period of ten (10)\nyears beyond termination of this agreement.\n\nARTICLE 7 - ASSIGNMENT\n\n         This Agreement and the right granted in this Agreement are personal to\nLICENSEE. LICENSEE shall have the right to assign rights of this Agreement\nprovided that assignee assumes all rights and responsibilities of the Agreement.\n\nARTICLE 8 - NOTICES\n\n         Any notice required or provided for by the terms of this Agreement\nshall be in writing. All notices shall be sent by first class mail, postage\nprepaid, to the business address of the party to be given notice. The business\naddresses of the parties shall be as follows:\n\nSarsep, Inc.                                      Prof. Dr. Gunther Bonn\n1600 Wyatt Dr., Suite 10                          Bahnhof Umgebung Nr. 3\nSanta Clara, CA  95054                            A-6170 Zirl\nUSA                                               Austria\nAttn:    President\n\nEither party may change its business address by notice to the other party.\n\nARTICLE 9 _- AGREEMENT\n\n         This Agreement is full and complete and replaces Marketing Agreement\ndated November 27, 1993.\n\nARTICLE 10 - MISCELLANEOUS\n\n         10.01 This Agreement shall be construed and the legal relations between\nthe parties determined in accordance with the laws of California.\n\n\n                                       4\n\n\n         10.02. Neither party shall be deemed to have waived any of its rights\nunder this Agreement by failure to take any actin to enforce any of its rights\nat any particular time.\n\n         10.03 This Agreement is the entire Agreement between the parties and\nthere are no other terms, obligation, covenants, representation, statements or\nconditions, oral or otherwise, of any kind. This Agreement may not be changed,\nmodified, or amended in whole or in part except by written document signed by\nthe duly-authorized officers of the parties.\n\n         10.04 The provisions of the Agreement shall be deemed separable. A\nholding by a court of competent jurisdiction that any provision of this\nAgreement which is not material to the consideration provided by either party is\nvoid or unenforceable shall not affect the validity or enforceability of the\nremaining provisions of the Agreement.\n\n\n\n                                       5\n\n\n\n         IN WITNESS WHEREOF, the parties have caused this Agreement to be\nexecuted in duplicate to be effective as of September 1, 1994.\n\nSARASEP, INC.                                 LICENSOR\n\nBy   \/s\/ Douglas T. Gjerde                    By  \/s\/ Gunther Bonn\n     ------------------------------               ------------------------------\n     Douglas T. Gjerde, President                 Prof. Dr. Gunther Bonn\n\nDate                1-5-95                    Date          6.2.1995            \n     ------------------------------               ------------------------------\n\n                                              By  \/s\/ Christian Huber\n                                                  ------------------------------\n                                                  Dr. Christian Huber\n\n                                              Date  January 6th, 1995\n                                                  ------------------------------\n\n                                              By  \/s\/ Dr. Peter Oefner\n                                                  ------------------------------\n                                                  Dr. Peter Oefner\n\n                                              Date  January 6th, 1995\n                                                  ------------------------------\n\n\n\n                                       6\n\n\n                                    AGREEMENT\n\n         This Agreement is made and entered into this 14th day of March, 1997.\nThis Agreement is intended to amend and modify Original Agreement dated\nSeptember 1, 1994 by and among Sarsep, Inc., a corporation, herein and therein\nreferred to as \"Licensee\" and a group of Inventors consisting of Prof. Dr.\nGunther Bonn, Dr. Christian Huber, and Dr. Peter Oefner. Original Agreement\nsates that the inventors are represented by Prof. Dr. Gunther Bonn herein and\ntherein referred to as \"Licensor.\" Prof. Dr. Bonn will be the interface for\ncontact between the Licensor and Licensee. All definitions in the original\nAgreement are incorporated herein.\n\n         WHEREAS, the Original Agreement among the parties provided in Article 2\nthat the Licensee with the mutual agreement of the Licensor would have the right\nto negotiate an agreement with an equipment manufacturer, and\n\n         WHEREAS, the Licensee wishes to develop and market the equipment to be\nused with the DNA Technology Rights and the Products and the Licensor is\nagreeable to granting the Licensee this right.\n\n         NOW THEREFORE based upon the mutual covenants and considerations\ncontained herein, the parties agree as follows:\n\n         1. Licensee shall have the exclusive right to develop and manufacture\nthe instrumentation necessary to use the DNA Products and the Technology Rights.\nThe Licensor agrees to work exclusively with the licensee on the method of use\nof the products and the Technology rights and the Licensor in this regard agrees\nnot to disclose method of use, proprietary information or competitive\ninformation to any third party.\n\n         2. Licensor agrees to work diligently with Licensee in the development\nand application of instrumentation for the Technology Rights and Products.\n\n         3. The parties further agree that ** will be paid with respect to the\ninstrumentation but the minimum royalty fee set out in paragraph 4.02 shall be\nincreased to ** per year payable at the rate of ** per quarter. The parties\nunderstand and agree that the Licensee will form a new corporation which will\nacquire the Licensee's interest in the Agreement. The principal purpose of the\nnew corporation will be to promote and develop DNA separation technology. The\nnew minimum license fee shall begin on the first quarterly payment date\nfollowing the funding of the new corporation with a minimum of One Million Five\nHundred Thousand Dollars ($1,500,000.00) of capital. Licensee shall have 18\nmonths from date of this Agreement to complete funding of the new corporation.\nIf funding is not completed within 18 months, then this Agreement shall expire\nbut the Original Agreement shall continue.\n\n         4. The parties understand and agree that the inventors use\ninstrumentation utilizing said DNA separation technology in the course of\nperforming their research. The inventors shall have the right to develop,\nassemble and use instrumentation for the purpose of performing research and\ndeveloping new methods and new instrumentation.\n\n         5. In all other respects, the original Agreement is confirmed and\nratified.\n\n\n\n\n         IN WITNESS WHEREOF, the parties have caused this Agreement to be\nexecuted to be effective as of February 1, 1997.\n\nSARASEP, INC.                                   LICENSOR\n\nBy    \/s\/ Douglas T. Gjerde                     By  \/s\/ Gunther Bonn\n      ----------------------------                  ---------------------------\n      Douglas T. Gjerde, Ph.D. President            Prof. Dr. Gunther Bonn\n\nDate          3-14-97                           Date\n      ----------------------------                  ---------------------------\n\n                                                By  \/s\/ Dr. Peter Oefner\n                                                    ---------------------------\n                                                    Dr. Peter Oefner\n\n                                                Date    3-29-97  \n                                                    ---------------------------\n\n                                                By  \/s\/ Dr. Christian Huber\n                                                    ---------------------------\n                                                    Dr. Christian Huber\n\n                                                Date  April 7, 1997\n                                                    ---------------------------\n\n** Certain confidential portions of this Exhibit were omitted by means of\nredacting a portion of the text indicated by two double-stricken through\nasterisks \"**\". This Exhibit has been filed separately with the Secretary of the\nCommission without the ** pursuant to the Registrant's Application Requesting\nConfidential Treatment under Rule 406 of the Securities Act.\n\n\n\n                                       2\n\n<\/pre>\n","protected":false},"template":"","meta":{"_acf_changed":false,"_stopmodifiedupdate":true,"_modified_date":"","_cloudinary_featured_overwrite":false},"corporate_contracts_companies":[9096],"corporate_contracts_industries":[9514],"corporate_contracts_types":[9613,9616],"class_list":["post-42472","corporate_contracts","type-corporate_contracts","status-publish","hentry","corporate_contracts_companies-transgenomic-inc","corporate_contracts_industries-technology__test","corporate_contracts_types-operations","corporate_contracts_types-operations__ip"],"acf":[],"_links":{"self":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts\/42472","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts"}],"about":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/types\/corporate_contracts"}],"wp:attachment":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/media?parent=42472"}],"wp:term":[{"taxonomy":"corporate_contracts_companies","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_companies?post=42472"},{"taxonomy":"corporate_contracts_industries","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_industries?post=42472"},{"taxonomy":"corporate_contracts_types","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_types?post=42472"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}