exv10w11






EXHIBIT 10.11




EXCLUSIVE LICENSE AGREEMENT NUMBER




Between



REVA Medical, Inc.



and



RUTGERS, THE STATE UNIVERSITY OF NEW JERSEY



 









 





EXCLUSIVE LICENSE AGREEMENT NUMBER 2




THIS Exclusive License Agreement Number 2 (the “Agreement”) is made and is effective as of the
1st day of June 2010, (the “Effective Date”) by and between Rutgers, The State
University Of New Jersey, having its statewide Office of Technology Commercialization at ASB Annex
III, 3 Rutgers Plaza, New Brunswick, New Jersey 08901-8559, (hereinafter referred to as “Rutgers”),
and REVA Medical, Inc., a California corporation having a principal place of business at 5751
Copley Drive, Suite B, San Diego, CA 92111 (hereinafter referred to as “Licensee”).




RECITALS




WHEREAS, Certain inventions were made in the course of research at Rutgers under the direction of
Dr. Joachim Kohn and in the course of research at Licensee; and




WHEREAS, The development of the inventions was sponsored in part by the National Institutes of
Health under Grant GM39455, and in consequence this Agreement is subject to overriding obligations
to the federal government as set forth in 35 U.S.C. sections 200-212 and applicable governmental
regulations; and




WHEREAS, Licensee entered into that certain Exclusive License Agreement dated January 21, 2004, as
amended, (the “2004 License Agreement”) (License Number L04-062); and




WHEREAS, the 2004 License Agreement is superseded and replaced in its entirety by this Agreement;
and




WHEREAS, Licensee has maintained a sponsored research agreement (as later defined) with Rutgers
(Dr. Joachim Kohn and other Rutgers employees working under his direction) and intends to continue
this agreement, which contributes to the Rutgers’ Patent Rights; and




WHEREAS, Licensee intends to continue its contributions to the technology advancements with its
collaboration efforts through the sponsored research agreement and its other research efforts; such
contributions and collaborations by Licensee have previously, and may in the future, give rise to
Joint Improvements (as later defined) and Joint Inventions (as later defined); and




WHEREAS, as of the Effective Date Licensee is a “Small Business Firm” as defined (for grants) in 15
U.S.C. 632; and




WHEREAS, Licensee wishes to obtain certain rights from Rutgers for the commercial development,
manufacture, use, and sale of the Inventions (defined below), and
Rutgers is willing to grant such rights on the terms and conditions set forth in this





 









 








Agreement;
and




WHEREAS, Rutgers is desirous that the Inventions be developed and utilized to the fullest extent so
that the benefits can be enjoyed by the general public.




NOW THEREFORE, the parties agree as follows:




1. DEFINITIONS




All definitions below or elsewhere in this Agreement apply to both their singular and plural forms,
as the context may require. “Herein,” “hereunder,” and “hereof” and other similar expressions
refer to this Agreement. “Section” and “Article” refer to sections in this Agreement. The term
“including” means “including without limitation” and “Days” means “calendar days,” unless otherwise
stated.





	1.1.	 	“Affiliate(s)” means any corporation or other legal entity that directly or indirectly
controls, is controlled by, or is under common control with Licensee to the extent of at least
fifty percent (50%) of the outstanding stock or other voting rights entitled to elect
directors.






	1.2.	 	“Change of Control” means the acquisition by a third party or an Affiliate of more than fifty
percent (50%) of Licensee’s securities which are outstanding after the acquisition, or all or
substantially all of Licensee’s assets.






	1.3.	 	“Confidential Information” with respect to property owned or controlled by either party means
all data, information, and/or tangible material owned or controlled by either party and
provided to each other, its Affiliates or its sublicensee (“Sublicensee) directly or
indirectly from or through either party, its units, its employees, the Inventors, or its
consultants relating to the Inventions, Licensed Products, or this Agreement, including but
not limited to, all patent prosecution documents and all information received from Inventors.






	1.4.	 	“Coronary stent products” means Licensed Products in the Licensed Field that are polymer
stents used in coronary blood vessels.






	1.5.	 	“Improvement(s)” means any change, modification or enhancement of a technology and/or
invention that cannot be practiced without infringing a claim cited in an Invention described
in Exhibit A and/or that cannot be practiced without a license to the Inventions described in
Exhibit A.






	1.6.	 	“Invention(s)” collectively means, with respect to Licensed Polymers, any patent application,
disclosure and/or discovery that is patentable or non-patentable,
which is included in Exhibit A, and as subsequently amended, which was made in the course of
research at Rutgers under the direction of Dr. Joachim Kohn




 









 












	 	 	(hereinafter “Rutgers
Inventions”) or in the course of research by Licensee, including work for hire, and is
included on Exhibit A, and as subsequently amended (hereinafter “Licensee Inventions”), or
was made by Rutgers and Licensee and is included on Exhibit A and as subsequently amended
(hereinafter “Joint Inventions”). The parties represent that Exhibit A correctly lists all
applicable intellectual property of theirs as of the Effective Date of this Agreement that
is intended to be included in the scope of this Agreement.






	1.7.	 	“Inventor(s)” collectively means any person at Rutgers working under the direction of Dr.
Joachim Kohn (“Rutgers Inventor”) and/or at Licensee, including work for hire (“Licensee
Inventor”) who contributes to the claims of a patentable invention or non-patentable
technology. If both a Rutgers Inventor(s) and a Licensee Inventor(s) contribute to said
invention or non-patentable technology, they shall be termed “Joint Inventors,” as applicable.






	1.8.	 	“Licensed Fields” collectively means:






	 	(i)	 	For all licensed intellectual property that is owned by Rutgers, the Licensed
Field shall be defined as any product applications that work in or with the vasculature
(i.e., that which comprises all cardiovascular and peripheral vessels (arteries and
veins, capillaries to large vessels, and blood vessels to the heart and those vessels
on the surface of the heart such as coronary vessels)) which includes vessel lumens
and/or vessel exteriors and vessel replacements. Products applications in the Licensed
Field may include a therapeutic that is pharmaceutically and/or biologically active
and/or a passive agent as long as said therapeutic is acting and is intended to be used
in a site specific fashion only. Excluded from the Licensed Field are






	 	(a)	 	any systemic drug delivery devices and implants that are placed
into the blood stream predominantly for the purpose of the delivery of a
therapeutic to the patient’s entire system, and






	 	(b)	 	arterial and venous closure devices defined as any device whose
primary purpose and function is to close a catheter access puncture of a blood
vessel, and






	 	(c)	 	any device that resides within the chambers (atria or ventricles)
of the heart or within the muscle wall of the heart chambers.






	 	(ii)	 	For all Joint Inventions that were jointly invented by Rutgers and Licensee and
filed in 2007 or thereafter, and for all Licensee Inventions, subject to the terms of
this License Agreement, the Licensed Field shall be defined as product applications
that work in or with the vasculature (i.e., that which comprises all cardiovascular and
peripheral vessels (arteries and veins,
capillaries to large vessels, and blood vessels to the heart and those vessels on the
surface of the heart such as coronary vessels) which includes vessel lumens and/or
vessel exteriors and vessel replacements. Products




 









 












	 	 	 	applications in the Licensed Field
may include a therapeutic that is pharmaceutically and/or biologically active and/or a
passive agent as long as said therapeutic is acting and is intended to be used in a
site specific fashion only. Excluded from the Licensed Field are






	 	(a)	 	any systemic drug delivery devices and implants that are placed
into the blood stream predominantly for the purpose of the delivery of a
therapeutic to the patient’s entire system.






	1.9.	 	“Licensed Method(s)” means any process, method, or use that is covered by Rutgers’ Patent
Rights or use or practice of which would constitute, but for the license granted to Licensee
pursuant to this Agreement, an infringement of any issued or pending claim within Rutgers’
Patent Rights.






	1.10.	 	“Licensed Polymer(s)” means (should be numbered (i) through (iv))






	 	(i)	 	any polymer that the manufacture, use or sale of which is covered by at least
one Valid Claim; and






	 	(ii)	 	Including starting materials to the extent used by Licensee or a Sublicensee to
make polymers under this Agreement in the Licensed Field, which materials are covered
by the intellectual property listed on Exhibit A, as amended, and Improvements thereto
(for example monomers). Notwithstanding anything to the contrary in this Agreement,
Licensed Polymers shall not include starting materials sold or traded as product itself
(i.e., a monomer) if the starting material is not covered by a Valid Claim, but






	 	(iii)	 	excluding the following intellectual property licensed by Rutgers to a third
party for certain fields of use: Polyarylates polymerized from diphenol monomers
disclosed in US Patents Nos. ***
and US Application Publication *** .






	 	iv)	 	excluding materials, methods and intellectual property claimed in Exhibit A not
already excluded by subsection 1.10 (iii) above, and that have been previously licensed
by Rutgers exclusively to a third party for use outside the “Licensed Fields” as
defined in Section 1.8 above.






	1.11.	 	“Licensed Product(s)” means those products containing a Licensed Polymer including, without
limitation, those Licensed Polymers that







 




			
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	 	(i)	 	are covered by Rutgers’ Patent Rights in that their manufacture, use,
distribution or sale would constitute, but for the license granted to Licensee pursuant
to this Agreement, an infringement of any valid claim within Rutgers’ Patent Rights
and/or






	 	(ii)	 	are discovered, developed, made, or practiced using a Licensed Method.






	1.12.	 	“Major Market Countries” means Canada, France, Germany, Italy, Japan, the United States of
America and the United Kingdom.






	1.13.	 	“Net Sales” means the total of the gross consideration received for Licensed Products made,
used, leased, transferred, distributed, sold or otherwise disposed of by Licensee, its
Affiliates, and its Sublicensees, less the sum of the following actual and customary
deductions, returns, credits, rebates or allowances actually paid or given, including without
limitation, cash, trade, or quantity discounts; sales, production, value added or use taxes
imposed upon particular sales; chargeback payments and rebates granted to managed healthcare
organizations or to governments; and import/export duties; and transportation and insurance
charges. In the event Licensee or any of its Affiliates or Sublicensees makes a transfer of a
Licensed Product to a third party for other than monetary consideration or for less than fair
market value, such transfer shall be considered a sale hereunder to be calculated at a fair
market value for accounting and royalty purposes. Furthermore if Licensee, its Affiliates or
Sublicensees commercially use Licensed Product with no expectation of subsequent royalty
bearing transfer of such Licensed Product to an unaffiliated third party, such commercial use
shall be considered a sale hereunder to be calculated at a fair market value for royalty and
accounting purposes. Only one royalty shall be payable to Rutgers with respect to each
Licensed Product. Notwithstanding the foregoing, free sampling of Licensed Product in
reasonable and customary quantities, including development trials, evaluation and reasonable
marketing, as well as providing Licensed Product for compassionate use, shall not be subject
to payment of royalties to Rutgers.
	 
	 	 	A Licensed Product shall be deemed made, used, leased, transferred, sold, or otherwise
disposed of at the time Licensee bills, invoices, ships, or receives payment for such
Licensed Product or commercially uses such Licensed Product, whichever occurs first.






	1.14.	 	“Non-Coronary Stent Product” means a Licensed Product in the Licensed Field that is inserted
into any blood vessel that is not part of the coronary blood supply.
For the avoidance of doubt, any stent used in peripheral blood vessels or any stent used
within the vasculature of the brain is a “Non-Coronary Stent Product.”






	1.15.	 	“Non-Stent Product” means a Licensed Product in the Licensed Field that is not




 









 






	 	 	inserted into
the blood vessel with the intent to maintain the lumen of a blood vessel open. For the
avoidance of doubt, a product injected into the vasculature with the intent of blocking the
flow of blood in a target blood vessel will be a “Non-Stent Product.”
	 
	1.16.	 	“Rutgers’ Patent Rights” means the following patent applications, provisional patent
applications, and issued patents owned or controlled by Rutgers and/or Rutgers’ ownership
interest in jointly owned provisional patent applications and issued patents to the extent
they apply to Licensed Polymers:






	 	(i)	 	U.S. Patents and Patent Applications listed on Exhibit A, and as subsequently
amended; any divisionals, renewals, substitutions, continuations or
continuations-in-part to any such Patent Applications; U.S. Patent(s) that claim
priority to, or common priority with, any of the foregoing Patent Applications; and any
reissues, extensions (including governmental equivalents thereto) and reexaminations to
any of the foregoing Patents that are owned or controlled by Rutgers, and






	 	(ii)	 	any other pending, issued or hereafter filed, foreign counterpart of any
application from clause (i) above, all of the foregoing owned or controlled by Rutgers,
in Exhibit A, and






	 	(iii)	 	any disclosures, U.S. provisional patent applications, patent registrations,
utility models, registered or unregistered designs, in Exhibit A, and






	 	(iv)	 	Improvements with respect to subsections (i), (ii) and (iii) above to which
Licensee acquires or has otherwise licensed rights in accordance with this Agreement
except as set forth in Section 2.8, and






	 	(v)	 	for avoidance of doubt, with respect to such Improvements with respect to
subsections (i), (ii) and (iii) which constitute the Licensee Inventions or Joint
Inventions of Licensee under U.S. patent law, Licensee elects to have such Licensee’s
rights in such Improvements included in the Rutgers’ Patent Rights for purposes of this
Agreement. Further, other intellectual property which is added to Exhibit A, pursuant
to the terms of this Agreement, will be included in the definition of Rutgers’ Patent
Rights for purposes of this Agreement






	1.17.	 	“Rutgers’ Technology” means, to the extent they apply to Licensed Polymers, all information,
know-how, data rights, trade secrets, mask works, and physical objects to the extent
reasonably necessary or useful to practice the Inventions in the Licensed Field and any
non-patent intellectual property thereunder owned or controlled by Rutgers, which Rutgers has
the right to disclose and license to Licensee, except as set forth herein, without incurring
obligations, and which was
created and discovered by, or under the direction of, one or more of the Rutgers Inventors
prior to the Effective Date of this Agreement.






	1.18.	 	“Sponsored Research Agreement” means the agreement dated July 18, 2002 between Licensee and
Rutgers for the work performed by Professor Joachim




 









 












	 	 	Kohn and other Rutgers employees, and as
previously amended by Modification No.1 dated July 7, 2003, Modification No. 2 dated October
12, 2004, Modification No.3 dated February 28, 2005 and Modification No.4 dated July 25, 2005
and Modification No. 5 dated July 12, 2006 and Modification No. 6 dated May 29, 2007 and
Modification No. 7 dated March 4, 2008 and Modification No. 8 dated December 23, 2008 and
Modification No. 9 dated July 21, 2009.






	1.19.	 	“Territory” means worldwide.






	1.20.	 	“Valid Claim” means either (a) a claim of an issued and unexpired patent included within the
Rutgers Patent Rights, which has not been held permanently revoked, unenforceable or invalid
by a decision of a court or other governmental agency of competent jurisdiction, unappealable
or unappealed within the time allowed for appeal, and which has not been admitted to be
invalid or unenforceable through reissue or disclaimer or otherwise or (b) a claim of a
pending patent application included within the Rutgers Patent Rights, which claim was filed in
good faith, and has not been abandoned or finally disallowed without the possibility of appeal
or refiling of such application.





2. GRANTS





	2.1.	 	Subject to the limitations set forth in this Agreement, Rutgers hereby grants to Licensee an
exclusive license solely with respect to Licensed Polymers in the Licensed Field in the
Territory under Rutgers’ Patent Rights and a non-exclusive right to use the Rutgers’
Technology, in each case to make, have made, use, import, put into use, modify, distribute,
sell, offer for sale and have sold Licensed Products and to practice Licensed Method in the
Territory during the term of this Agreement. During the term of this Agreement, Licensee
shall also have the right to make Improvements as long as the Improvements are made with the
intent to incorporate into this Agreement.






	2.2.	 	As the Inventions were funded in part by the U.S. Government, the licenses granted hereunder
shall be subject to the overriding obligations to the U.S. Government set forth in 35 U.S.C.
200-212 and any future amendments thereto, and applicable governmental regulations, as well as
any other applicable governmental restrictions, if any, including, without limitation






	 	(i)	 	to the obligation to manufacture in the United States Licensed Product intended
for consumption in the United States unless a waiver is obtained, and






	 	(ii)	 	to the royalty free non-exclusive license thereunder to which the U.S.
Government is entitled.




 









 












	2.3.	 	Rutgers’ reserved rights:






	 	(i)	 	Rutgers expressly reserves the right to have the Inventions and associated
Rutgers Patent Rights licensed hereunder used for educational, non-commercial research
and other non-business purposes and to publish (excluding Licensee Confidential
Information) the results thereof.






	 	(ii)	 	Except as provided by Section 2.8, Licensee hereby grants to Rutgers an
exclusive, worldwide, license, with right of sublicense, to make, use and sell products
containing or covered by the claims of Inventions listed on Exhibit A, as amended and
Improvements thereto, discovered and/or developed by or on behalf of Licensee, its
Affiliates or its Sublicensees during the term of this Agreement for all fields of use
outside the Licensed Field. With respect to Rutgers Patent Rights, in the event that
Rutgers sublicenses these Rutgers Patent Rights to a third party outside the Licensed
Field after the Effective Date, the patent-related costs of the Rutgers Patent Rights
will be shared pro-rata with either Rutgers or the applicable Sublicensee.






	 	(iii)	 	If, pursuant to the rights granted in Section 2.3(ii), Rutgers licenses only
Inventions and/or Improvements constituting a Licensee Invention or otherwise solely
owned by Licensee, Rutgers shall pay Licensee *** percent (***%) of all income and
consideration Rutgers receives from such licenses. Rutgers shall make all such
payments, and provide reports and audit rights, consistent with Sections 5, 7 and 8,
parri passu. Notwithstanding the foregoing, Rutgers shall deduct all non-reimbursed
patent costs and other reasonable out of pocket costs it has incurred in regards to
such license prior to allocating income percentages. This provision shall survive
termination of the license.






	 	(iv)	 	As long as Licensee retains its exclusive grant of license rights from Rutgers
pursuant to the terms of this Agreement, neither Rutgers nor its (sub)licensees shall
have the right to practice the license rights to the Improvements granted pursuant to
this Section within the Licensed Field for commercial purposes.






	2.4.	 	To the extent Rutgers, principally through the Inventors, has provided Rutgers’ Technology to
Licensee, it is understood that at the time of disclosure to the Licensee some of the Rutgers’
Technology may have been made available to the public without restrictions.






	2.5.	 	Continuing Research by Rutgers and Licensee.






	 	(i)	 	Each Party will advise the other of Improvements to the Inventions made by the
Inventors during the term of this Agreement and will disclose them to the Rutgers
Office of Technology Commercialization. Each party shall further disclose to each
other any patent filings directly related to the Inventions that such party intends to
make.







 




			
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	 	(a)	 	Rutgers Inventions which are Improvements, to the extent such
Improvements were funded by Licensee pursuant to a Sponsored Research Agreement
between Licensee and Rutgers, will be included within the definition of
“Inventions” set forth in this Agreement.






	 	(b)	 	For avoidance of doubt, Licensee Inventions and all Joint
Inventions which are Improvements will be included within the definition of
“Inventions” set forth in this Agreement.






	 	(c)	 	A new Invention, which is not an Improvement, and which is within
the definition of the Licensed Polymer and is developed as part of the Sponsored
Research Agreement, and which is a Rutgers Invention or a Joint Invention, will
be included within the definition of “Inventions” set forth in this Agreement.






	 	(ii)	 	Each Party will advise the other, at their sole discretion, if they elect to
include in this Agreement a novel invention that consists of a new biodegradable
polymer that:






	 	(a)	 	is not an Improvement to an existing Invention on Exhibit A, and
	 
	 	(b)	 	that was developed separately from the Sponsored Research
Agreement, and
	 
	 	(c)	 	that is a sole Invention by Rutgers Inventors or by Licensee
Inventors.
Upon one Party providing written notice to the other party pursuant to this clause
(ii), the applicable invention shall be an “Invention” under this Agreement.






	 	(iii)	 	Exhibit A will be periodically amended to include Improvements, new
Inventions.






	 	(iv)	 	The provisions of this Agreement supersede the terms of intellectual property
as stated in the Sponsored Research Agreement.






	2.6.	 	Subject to Sections 2.3 and 2.8, Licensee shall hold all rights and interests in and to any
Improvements that Licensee, its Affiliates or its Sublicensees develop during the term of this
Agreement for the Licensed Field. The parties shall execute any and all documentation and
take any such actions at Licensee’s expense to achieve the intent of this Section 2.6 and
Sections 2.1, 2.3 and 2.8. For avoidance of doubt, with respect to such Improvements,
Licensee Inventions will be included in the Rutgers’ Patent Rights for purposes of this
Agreement.






	2.7.	 	Subject to Sections 2.2 and 2.3 Rutgers represents that as of the Effective Date of this
Agreement it has not entered into any agreements or other arrangements to license the Rutgers’
Patent Rights to any third party in the Licensed Field, and warrants that to the extent
Licensee is not in default of its obligations under this Agreement and retains an exclusive
license in the Licensed Field to such provisional patent or U.S. or foreign patent
applications corresponding thereto or patents issuing thereon, Rutgers shall not grant to a
third party a license of such




 









 












	 	 	applications or patents in the Licensed Field or for any other
polymer within the Licensed Field (for avoidance of doubt, as used solely in this instance
“Licensed Field” shall exclude the “solely with respect to Licensed Polymers” language
therein).






	2.8.	 	Notwithstanding anything in this Agreement to the contrary, after the effective date of a
Change of Control, all rights (including Rutgers Patent Rights and Rutgers Technology), title
and interests in any Improvements made by Licensee with no contribution by Rutgers after such
Change of Control, shall be owned exclusively by Licensee without any obligation to pay any
royalties or fees of any kind on such Improvements (or the use of the Improvements in any
products). For avoidance of doubt,






	 	(i)	 	after a Change of Control, such Improvements shall not constitute “Rutgers’
Patent Rights” or “Inventions” as such terms are defined in this Agreement, and






	 	(ii)	 	notwithstanding Sections 2.1, 2.3, 2.6 and 11, Licensee shall not be obligated
to license or assign such Improvements which are Licensee Inventions, or any rights
underlying such Improvements, or any information related to such Improvements, to
Rutgers or any third party and all rights granted to Rutgers hereunder with respect to
such Improvements shall terminate.





3. SUBLICENSES





	3.1.	 	Rutgers grants to Licensee the right to grant sublicenses to third parties under any or all
of the licenses granted in Article 2, provided Licensee has current exclusive rights thereto
under this Agreement at the time it exercises a right of sublicense. To the extent applicable,
any such sublicense shall include all of the rights of and obligations due to Rutgers (and to
the U.S. Government) that are contained in this Agreement. Upon any termination of this
Agreement, any sublicense agreements that have been properly entered into prior to the date of
such termination and that are in good standing shall be automatically assigned to Rutgers
after the date of such termination, such that the applicable Sublicensee shall continue to
receive a license under the Rutgers’ Patent Rights.






	3.2.	 	Within thirty (30) days after execution thereof, Licensee shall provide Rutgers with a copy
of each sublicense issued hereunder, and shall thereafter collect and guarantee payment of all
royalties and other obligations due Rutgers relating to the sublicenses and summarize and
deliver all reports due Rutgers relating to the sublicenses. Notwithstanding the foregoing,
if a Sublicensee breaches its obligation to pay royalties to Licensee pursuant to the terms of
the sublicense agreement, and Licensee timely terminates the applicable sublicense agreement,
then Licensee shall not be in breach of its obligation to pay royalties to Rutgers from such
Sublicensee’s Net Sales of Licensed Product.




 









 












	4.	 	LICENSE FEES AND MILESTONE AND OTHER PAYMENTS






	4.1.	 	Licensee shall pay to Rutgers $ *** on January 1, 2010 and on each following
annual anniversary thereafter, until a Licensed Product has commenced commercial sales in a
Major Market Country.






	4.2.	 	Licensee shall pay to Rutgers milestone payment fees on milestones achieved by REVA itself
(not Sublicensees) of:






	 	(i)	 	$ *** for the European Marketing Approval of each Coronary Stent Product, $
*** for the European Marketing Approval of each Non-Coronary Stent Product, and $
*** for the European Marketing Approval of any other product that is a Non-Stent
Product, up to a total aggregate over the lifetime of this Agreement of $ *** for
European Marketing Approvals, and,






	 	(ii)	 	$ *** for the Marketing Approval of each Coronary Stent Product in any
country other than the USA and Europe, $ *** for the Marketing Approval of each
Non-Coronary Stent Product in any country other than the USA and Europe, and $ ***
for the Marketing Approval of any other product that is a Non-Stent Product in any
country other than the USA and Europe, up to a total aggregate over the lifetime of
this Agreement of $ *** for all Marketing Approvals in countries that are outside of
Europe and the USA.






	 	(iii)	 	$*** for the Pre-Marketing Approval by USFDA of each Coronary Stent
Product, $ *** for the Pre-Marketing Approval by USFDA of each Non-Coronary Stent
Product by USFDA, and $ *** for each Non-Stent Product by USFDA, up to a total
aggregate over the lifetime of this Agreement of
$ *** for all Pre-Market Approvals (or equivalent regulatory approval) by USFDA.






	 	(iv)	 	These milestone payment fees under Sections (i) through (iii) shall be paid
to Rutgers within thirty (30) days after the occurrence of the event set forth on the
schedule above and shall not be refundable or creditable against royalties.






	4.3.	 	Licensee shall pay to Rutgers *** percent (***%) of milestone fees and ***% up to the
first $*** received (***% of all amounts received over $***) of license fees received in
consideration for the grant of a sublicense to Rutgers’ Patent Rights, Rutgers’ Technology or
Licensed Products licensed hereunder (“Rights”) received by Licensee or its Affiliates in
connection with all such sublicenses or







 




			
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	 	 	transfer of rights agreements. The applicable fee will
be made at the first to occur of the following:






	 	(i)	 	The first milestone payment received by Licensee under a sublicense or transfer
of rights agreement or






	 	(ii)	 	The first commercial sale of Licensed Product by a Sublicensee under a
sublicense or transfer of rights agreement or






	 	(iii)	 	30 days after receipt by Licensee if received after the occurrence of (i) or
(ii) above.






	4.4.	 	Neither milestone or license fees shall be paid on the following:






	 	(i)	 	royalties received pursuant to Section 5.1 herein, and






	 	(ii)	 	bona fide equity investments in Licensee, and






	 	(iii)	 	payments received and used for the direct cost of future Licensee research
expenses and reasonable operating expenses of Licensee related to the development of
the Licensed Products for which the payments are received (including without limitation
reimbursement for patent expenses), and






	 	(i)	 	payments received as installments in the sale of Licensee to a third party or
a part of a Change of Control (regardless of structure, and for avoidance of doubt,
whether structured as a sale of substantially all of the assets of Licensee or a sale
of substantially all of the stock of Licensee).






	4.5.	 	In sublicense or “transfer of rights” transaction agreements set forth above, where Licensee
equity is part of the transaction and the Sublicensee is purchasing Licensee’s equity at above
its fair market value, then Licensee will pay Rutgers *** percent (***%) of the
difference between the consideration received by License and the fair market value (as
determined by a mutually agreeable third party under confidentiality obligations at least as
protective of the parties as those set forth in this Agreement) of the equity acquired if such
difference is less than $***. If the difference between the consideration received
by Licensee for such equity and the fair market value (as determined by a
mutually agreeable third party under confidentiality obligations at least as protective of
the parties as those set forth in this Agreement) of the equity acquired exceeds $***, then
Licensee shall pay Rutgers *** percent (***%) of such difference.






	4.6.	 	Licensee shall pay Rutgers a one time fee of $*** at closing of the first Change of
Control of Licensee.







 




			
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5. ROYALTIES





	5.1.	 	Except as otherwise required by law, Licensee shall pay to Rutgers a royalty of ***
percent (***%) of Licensee’s Net Sales of each category of Licensed Products and
*** percent (***%) of Net Sales of Licensee’s Sublicensees. This obligation to pay
royalties shall survive termination (but not expiration) of this License.
	 
	 	 	Sales or other transfers among Licensee, its Affiliates and Sublicensees which would
otherwise be royalty bearing under this Agreement shall be disregarded for purposes of
computing royalties, to the extent that Licensed Products subject to such sale or transfer
are subsequently sold or transferred to a third party where a payment of royalty by such
third party pursuant to the terms of this Agreement with respect to such sale or transfer
will be required. Regardless of the number of Licensed Patents that cover a Licensed
Product, Licensee shall only pay one applicable royalty set forth in this Article 5.1, and
shall not pay multiple royalties for such overlapping coverage.
	 
	5.2.	 	Royalties payable to Rutgers shall be paid quarterly on or before the following dates of each
calendar year with respect to the immediately preceding calendar quarter:






	 	(i)	 	February 28th, and
	 
	 	(ii)	 	May 31st, and
	 
	 	(iii)	 	August 31st, and
	 
	 	(iv)	 	November 30th.






	 	 	Each such payment will be for unpaid royalties that accrued within Licensee’s most recently
completed calendar quarter plus any other undisputed unpaid royalties due, but not
previously paid for any reason.






	5.3.	 	For the term of this Agreement, with regard to Coronary Stent Products only Licensee shall
pay to Rutgers a minimum annual royalty beginning on the first
anniversary of the first commercial sale of a Coronary Stent Product according to the
following payment schedule:
	 
	 	 	Year one: $***
	 
	 	 	Year two: $***
	 
	 	 	Year three: $***







 




			
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	 	 	Year four: $***
	 
	 	 	Year five: $***
	 
	 	 	Year six: $***
	 
	 	 	In year seven and every year thereafter, Licensee shall pay an annual fee of
$***
	 
	 	 	For the term of this Agreement with regard to Non-Coronary Stent Products and Non-Stent
Products which for the purposes of this Section 5.3 only are combined into one category of
Licensed Products other than Coronary Stent Products, Licensee shall pay to Rutgers a
minimum annual royalty beginning on the first anniversary of the first commercial sale of a
Licensed Product, other than a Coronary Stent Product, according to the following payment
schedule.






	 	 	Year one: $***
	 
	 	 	Year two: $***
	 
	 	 	Year three: $***
	 
	 	 	Year four: $***
	 
	 	 	Year five: $***
	 
	 	 	Year six: $***
	 
	 	 	In year seven and every year thereafter, Licensee shall pay an annual minimum royalty
payment of $***.






	5.4.	 	This minimum annual royalty shall be paid to Rutgers by February 28 of each year and shall be
credited against the earned royalty due and owing for the
calendar year in which the minimum annual royalty is paid. The first minimum annual royalty
due shall be prorated by the fractional number of full months remaining in that calendar
year and shall be paid within forty-five days (45) of the date of first commercial sale of a
Licensed Product.






	5.5.	 	All amounts due Rutgers shall be payable in United States Dollars in New Brunswick, New
Jersey. When Licensed Products are sold for monies other than United States Dollars, the
earned royalties will first be determined in the foreign currency of the country in which such
Licensed Products were sold and then







 




			
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	 	 	converted into equivalent United States Dollars. The
exchange rate will be the average of the United States Dollar buying rate quoted in the Wall
Street Journal on the last business day of each month during the reporting period.
	 
	5.6.	 	Licensee shall be responsible for any and all taxes, fees, or other charges imposed by the
U.S. Government or any country outside the United States on the income for sales occurring in
any such country, excluding income taxes owing on Rutgers’ income.
	 
	5.7.	 	If at any time legal restrictions prevent the acquisition or prompt remittance of United
States Dollars by Licensee with respect to any country where a Licensed Product is sold,
Licensee shall pay royalties due to Rutgers from Licensee’s other sources of United States
Dollars.
	 
	5.8.	 	In the event that any patent or any claim thereof included within the Rutgers’ Patent Rights
shall be held invalid in a final decision by a court of competent jurisdiction and last resort
in any country and from which no appeal has or can be taken, all obligation to pay royalties
based on such patent or claim or any claim patently indistinct there from shall cease as of
the date of such final decision with respect to such country. Licensee shall not, however, be
relieved from paying any royalties that accrued before such decision or that are based on
another patent or claim not involved in such decision, or that are based on the Rutgers’
Technology.
	 
	5.9.	 	If a license to the Inventions has been granted to the U.S. Government, no running royalties
shall be payable hereunder on Licensed Products sold to the U.S. Government. Licensee, its
Affiliates and its Sublicensees shall reduce the amount charged for Licensed Products sold to
the U.S. Government by an amount equal to the royalty for such Licensed Products otherwise due
Rutgers as provided herein.
	 
	5.10.	 	If Licensee’s practice of a claim of an issued patent included in the Rutgers’ Patent Rights
infringes a third party’s patent rights (as documented by a written opinion of an outside
patent counsel selected by the parties, a copy of which is provided to Rutgers), and as a
result Licensee is obligated to pay running
royalties to such third party as a result of such infringement, then to the extent the sum
of the running royalties Licensee is obligated to pay Rutgers and said third party for such
infringement exceed ***% of Net Sales of Licensed Product, the running royalties
due Rutgers shall be reduced by *** percent (***%) of such excess, provided however, the
running royalty rate due Rutgers will not be reduced by more than one-half the rates
otherwise due to Rutgers, as stated above.







 




			
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6. DILIGENCE





	6.1.	 	Licensee, upon and after execution of this Agreement, shall use all reasonable efforts to
develop, test, obtain any required governmental approvals, manufacture, market and sell
Licensed Products in all countries of the Major Market Countries and any such other countries
mutually agreed to by the parties. Licensee shall use all commercially reasonable efforts to
obtain such Major Market Country approval within a reasonable time after execution of this
Agreement and supply (or have supplied) Licensed Product to such Major Market Countries in
quantities sufficient to meet the market demands.
	 
	6.2.	 	Licensee shall be entitled to exercise prudent and reasonable business judgment in meeting
its diligence obligations in Section 6.1, but at a minimum will exert at least the efforts
that it exerts for its own highly valuable potential products under development and existing
products being marketed and sold.
	 
	6.3.	 	Licensee shall meet the following key commercialization milestones within the time frames
indicated. If a substantial change in laws or regulations that directly affects the approval
process for a Licensed Product prevents Licensee from meeting the milestone dates in this
Section 6.3 Rutgers and Licensee agree to negotiate in good faith for a reasonable change in
the dates effected.






	 	(i)	 	In regard to a Coronary Stent Product,






	 	(a)	 	Licensee or its Sublicensees will initiate at least one clinical trial
for a Coronary Stent Product within eighteen (18) months of the Effective Date of
this Agreement in Major Market Country.
	 
	 	(b)	 	Licensee or its Sublicensees will submit a complete application to
either an appropriate regulatory body in the European Community or to the USFDA for
CE Market/PreMarket Approval for at least one Coronary Stent Product within
forty-eight (48) months of the Effective Date of this Agreement. Should applicable
regulatory requirements change subsequent to the Effective Date or should there
arise a technical complication requiring that Licensee (or Sublicensees) must
perform additional research and development work to satisfy the new requirements,
Licensee may request an extension at no cost to Licensee of up to eighteen (18)
months to complete this milestone. Permission for such an extension shall not be
unreasonably withheld by Rutgers as long as Licensee provides documentation showing
that the extension is necessary, as well as a reasonable revised timeline to the
submission required to satisfy this milestone. .
	 
	 	(c)	 	Licensee or its Sublicensees will commence commercial sales of at least




 









 






	 		 	one Coronary Stent Product in at least one Major Market Country within six (6)
months of obtaining regulatory approval for such product.






	 	(ii)	 	With regard to any Non-Stent Product,






	 	(a)	 	Licensee shall pay to Rutgers $*** upon execution of this
Agreement.
	 
	 	(b)	 	Licensee or its Sublicensees shall file with the USFDA or with
a comparable agency in another Major Market Country, product specific
applications to initiate human trials that are intended to lead to market
approval of a Licensed Product. Such filing shall occur no later than three
(3) years from the date of execution of this Agreement. If such filing does
not occur within three years, Licensee may elect to extend the filing period by
an additional year by payment of a $***
extension fee. If extended, and if such filing does not occur by the fourth
anniversary, Licensee may elect a further extension of the filing period to a
fifth year by payment of a $*** extension fee. If additional extensions are
required, Licensee may obtain them by paying $*** annually there
after if the necessary filing has not occurred prior to the date the extension
fee is due.
	 
	 	 	 	Should applicable regulatory requirements change subsequent to the Effective
Date or should there arise a technical complication requiring that Licensee (or
Sublicensees) must perform additional research and development work to satisfy
the new requirements, Licensee may request a one-time extension at no cost to
Licensee of up to eighteen (18) months to complete this milestone. Permission
for such an extension shall not be unreasonably withheld by Rutgers as long as
Licensee provides documentation showing that the extension is reasonably
necessary, as well as a reasonable revised timeline to the submission required
to satisfy this milestone.





For the avoidance of doubt, it is made explicit that the extension fees outlined above are
distinct from milestone, license or any other fees discussed in this Agreement.



7. PROGRESS AND PAYMENT REPORTS





	7.1.	 	Beginning six (6) months after the Effective Date, and semi-annually thereafter,







 




			
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	 	 	Licensee
shall submit to Rutgers a progress report covering Licensee’s activities related to the
research, development and testing of Licensed Products and the obtaining of governmental
approvals necessary for marketing. These progress
reports are Licensee’s Confidential Information and shall be made for each Licensed Product
in each country of the Territory.
	 
	7.2.	 	The progress reports submitted under Section 7.1 shall include sufficient information to
enable Rutgers to determine Licensee’s progress in fulfilling its obligations under Article 6,
including, but not limited to, the following topics:






	 	(i)	 	summary of work completed, including key scientific results and market
analysis;
	 
	 	(ii)	 	summary of work in progress, including product development and testing and
progress in obtaining government approvals;
	 
	 	(iii)	 	current schedule of anticipated events or milestones;
	 
	 	(iv)	 	market plans for introduction of Licensed Products in the Territory;
	 
	 	(v)	 	summary of resources (dollar value) spent in the reporting period for research,
development, and marketing of Licensed Products;
	 
	 	(vi)	 	activities in obtaining Sublicensees and activities of Sublicensees;
	 
	 	(vii)	 	certified financial statements as of the end of the previous calendar quarter;
and,
	 
	 	(viii)	 	A statement showing how amounts due were calculated.






	7.3.	 	Licensee shall have a continuing responsibility to keep Rutgers informed of the large/small
entity status (as defined by the United States Patent and Trademark Office) of itself and its
Sublicensees.
	 
	7.4.	 	Licensee shall report to Rutgers in its immediately subsequent progress and payment report
the date of first commercial sale of each Licensed Product in each country.
	 
	7.5.	 	After the first commercial sale of a Licensed Product anywhere in the world, Licensee will
make quarterly royalty reports to Rutgers on or before each February 28, May 31, August 31 and
November 30 of each year. Each such royalty report will cover Licensee’s most recently
completed calendar quarter and will show






	 	(i)	 	the units and gross consideration received and Net Sales of each type of
Licensed Product sold by Licensee, its Affiliates and sublicenses on which royalties
have not been paid, including a clear indication of how Net Sales were calculated;
	 
	 	(ii)	 	the royalties and fees, in U.S. dollars, payable hereunder and which patents
apply;
	 
	 	(iii)	 	the method used to calculate the royalty;
	 
	 	(iv)	 	the exchange rates used, if any; and




 









 






	 	(v)	 	any other information relating to the foregoing reasonably requested by
Rutgers.






	7.6.	 	If no sales of Licensed Products have been made during any reporting period, a
statement to this effect shall be made by Licensee.
	 
	7.7.	 	Licensee shall include a written statement with any additional payment or other consideration
made to Rutgers pursuant to the terms of this Agreement setting forth in reasonable detail the
basis for the payment and the manner in which the payment was calculated.





8. BOOKS AND RECORDS





	8.1.	 	Licensee shall keep and cause its Affiliates and require its Sublicensees to keep books and
records in accordance with generally accepted accounting principles accurately showing all
financial transactions and information relating to this Agreement. Such books and records
shall be preserved for at least five (5) years from the date of the entry to which they
pertain and shall be open to inspection by a nationally recognized accounting firm designated
by Rutgers no more than once a calendar year at reasonable times upon reasonable notice.
	 
	8.2.	 	The fees and expenses of Rutgers’ representatives performing such an examination shall be
borne by Rutgers. However, if an error in any payment of more than five percent (5%) of such
payment due is discovered, then the fees and expenses of these representatives shall be borne
by Licensee, and Licensee shall promptly reimburse Rutgers for reasonably documented audit
expenses as well as all overdue payments and late interest payments. Any information gathered
during such accounting shall be deemed Licensee’s Confidential Information, and the
independent accounting firm shall be bound to confidentiality terms substantially equivalent
to those contained in this Agreement.





9. TERM OF THE AGREEMENT





	9.1.	 	Unless otherwise terminated by operation of law or by acts of the parties in accordance with
the provisions of this Agreement, this Agreement shall be in force from the Effective Date and
shall remain in effect in each country of the Territory until the expiration of the
last-to-expire patent licensed under this Agreement in such country.
	 
	9.2.	 	Any termination or expiration of this Agreement shall not affect the rights and obligations
set forth in the following Sections and/or Articles:






	 	 	 	Article 1, Section 2.2, Section 2.3, Section 2.6, Section 2.8, Section 3.1,




 









 






	 	 	 	Section
5.5, Section 5.6, Section 5.7, Section 5.8, Section 5.9, Section 5.10, Article 8,
this Article 9, Section 10.1, Section 11.1, Article 12, Article 13, Article 17,
Article 18, Article 19, Article 20, Article 21, Article 22, Article 24, Article 25,
Article 26, Article 27.






	9.3.	 	Any termination or expiration under this Agreement shall not relieve a party of any
obligation or liability accrued hereunder prior to such termination or expiration or rescind
anything done by a party or any payments made to the other party hereunder prior to the time
such termination or expiration becomes effective, and such termination or expiration shall not
affect in any manner any rights of a party arising under this Agreement prior to such
termination or expiration. Solely upon expiration of this Agreement in any country, Rutgers
shall grant to Licensee the rights set forth in Section 2.1, solely with regard to the
Rutgers’ Technology on a perpetual, non-exclusive and fully-paid basis in such country.
	 
	9.4.	 	Except as expressly set forth in this Agreement, Licensee shall only have the right to
terminate this Agreement in its entirety , or to terminate with regard to its obligations
under the Agreement that relate to Coronary Stent Products, if specific circumstances obtain
as described below. In the event of such termination, Licensee shall give Rutgers one hundred
and twenty (120) days notice of intent to terminate. Licensee may not terminate Agreement
prior to initial commercial sales of a Coronary Stent Product. The circumstances that would
permit Licensee to terminate the Agreement are specified below:






	 	a.	 	If market conditions outside Licensee’s control related to commercial potential
for Coronary Stent Products deteriorate to the extent that continued marketing of such
Products is no longer commercially viable for Licensee. In these circumstances,
Licensee shall provide Rutgers with documentation of the market conditions adversely
affecting sales of Coronary Stent Products and how such conditions make it no longer
commercially reasonable for Licensee to continue to market said products. Market
conditions sufficient to justify termination would include, for example (but would not
be restricted to), the commercial development of a non-stent technology that
substantially reduces the demand for and/or the selling price of the Coronary Stent
Products to the extent that it is no longer commercially viable for Licensee to
continue to market such Products.
	 
	 	b.	 	The imposition of new regulations (outside Licensee’s control) that render
further marketing of Coronary Stent Products not commercially viable for Licensee.
Regulatory factors justifying termination of the License might include, but would not
be restricted to, regulations that so affect the manufacture of Coronary Stent Products
(including the polymer, the stent or




 









 







	 	 	 	any process related thereto) that it is no longer
commercially viable for Licensee to produce such Products (e.g. if a component of the
manufacturing process is banned from the market or otherwise becomes unavailable and
there is no suitable replacement). Another example of a regulation that would justify
termination of the Agreement is one that would result in the
Product being prohibited from use in human beings. . In these circumstances, Licensee
shall provide Rutgers with documentation regarding the applicable regulatory change and
the effect of such change on Licensee.






	 	 	Unless Licensee terminates the Agreement under the provisions of this Section 9.4, following
receipt of regulatory approval to market a Coronary Stent Product, Licensee will be bound by
the minimum royalty payments set forth in Section 5.3.
If Licensee terminates the Agreement in whole under the provisions of this Section 9.4,
Licensee will forfeit all rights to manufacture, sell, or distribute any Licensed Products
and Licensee will assign its interest in any and all joint patent rights included in Rutgers
Patent Rights to Rutgers. If Licensee only terminates the Agreement with respect to
Coronary Stent Products, then it shall only forfeit the rights to manufacture, sell or
distribute Coronary Stent Products and will assign to Rutgers its interest in any and all
applicable patent rights included in Rutgers Patent Rights.





10. TERMINATION FOR CAUSE BY EITHER PARTY





	10.1.	 	If one party should materially breach or materially fail to perform any provision of this
Agreement, then the other party may give written notice of such default (Notice of Default) to
the breaching party. The parties agree that failure to make any payment when due under the
terms of this Agreement or breach of any of the required obligations in Sections 6.1 through
6.3 of the Agreement shall be deemed, without limitation, a material breach or a material
failure under this Section. If the breaching party should fail to cure such default within
sixty (60) days of notice thereof, the non-breaching party shall have the right to terminate
this Agreement and the licenses herein by a second written notice (Notice of Termination) to
the breaching party. If a Notice of Termination is sent to the breaching party, this
Agreement shall automatically terminate on the effective date of such notice. Termination
shall not relieve the breaching party of its obligation to pay all amounts due to the
non-breaching party as of the effective date of termination and shall not impair any accrued
rights of the non-breaching party.
	 









11. DISPOSITION OF LICENSED PRODUCTS AND INFORMATION ON HAND UPON TERMINATION







 









 









	11.1.	 	Upon termination of this Agreement by either party:






	 	(i)	 	Licensee shall have the privilege of disposing of all previously made or
partially made Licensed Products (Licensee may complete partially made Licensed
Products), but no more, within a period of one hundred and eighty (180) days after the
initial notice of termination given pursuant to Sections 9.4, 10.1 or 11.1 hereunder,
provided, however, that the disposition of such Licensed Products shall be subject to
the terms of this
Agreement including, but not limited to, the payment of royalties at the rate and at
the time provided herein and the rendering of reports thereon; and,
	 
	 	(ii)	 	each party shall promptly return, and shall cause its Affiliates and require
its Sublicensees to return, all property belonging to the other party, including
without limitation in the case of Rutgers, Rutgers’ Technology and Rutgers’
Confidential Information, if any, that has been provided to Licensee or its Affiliates
or Sublicensees hereunder; and including without limitation in the case of Licensee,
Licensee Confidential Information. All copies and facsimiles thereof and derivatives
therefrom shall be returned (except that one copy of written material for record
purposes only, provided such material is not used for any other purpose and is not
disclosed to others).







12. USE OF NAMES, TRADEMARKS, AND CONFIDENTIAL INFORMATION




	12.1.	 	Nothing contained in this Agreement shall be construed as granting any right to a party, its
Affiliates or Sublicensees to use in advertising, publicity, or other promotional activities
or otherwise any name, trade name, trademark, or other designation of the other party or any
of its units (including contraction, abbreviation or simulation of any of the foregoing).
Unless required by law or consented to in advance in writing by an authorized representative
of Rutgers, the use by Licensee of the name, “Rutgers, The State University” or any campus or
unit of Rutgers is expressly prohibited.










	13.	 	 LIMITED WARRANTY





	13.1.	 	Rutgers represents to Licensee that as of the Effective Date it owns the Rutgers’ Patent
Rights and that Rutgers has the lawful right to grant the licenses in this Agreement to
Licensee. Licensee represents that it owns the Licensee Inventions, that it has the lawful
right to grant the licenses in this Agreement to Rutgers, and that it has consented to include
the Licensee Inventions as part of Exhibit A in this Agreement.






	13.2.	 	Rutgers represents that, as of the Effective Date, its Director of the Office of Technology
Commercialization: (a) has no actual knowledge of any third party intellectual property rights
which are infringed by the use of the Rutgers’ Patent




 









 








	 	 	Rights or Rutgers’ Technology; and (b)
has no actual knowledge of any action or suit that threatens the validity of the Rutgers’
Patent Rights or of any intellectual property rights owned by Rutgers as of the Effective Date
which would prevent Licensee from practicing the rights licensed to Licensee under this
Agreement. Rutgers shall not exercise any intellectual property rights owned by Rutgers as of
the Effective Date, or grant a license to any third party, which would prevent Licensee from
practicing, or conflict with, the rights licensed to Licensee under this Agreement.
	 
	13.3.	 	EXCEPT AS SET FORTH IN SECTION 13.1 AND 13.2, THIS LICENSE IS WITHOUT WARRANTY OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER WARRANTY, EXPRESS OR IMPLIED
AND RUTGERS MAKES NO REPRESENTATION OR WARRANTY THAT THE LICENSED PRODUCTS OR LICENSED METHODS
WILL NOT INFRINGE ANY PATENT OR OTHER PROPRIETARY RIGHT.
	 
	13.4.	 	IN NO EVENT WILL EITHER PARTY BE LIABLE FOR ANY INCIDENTAL, DIRECT, INDIRECT, SPECIAL OR
CONSEQUENTIAL DAMAGES, INCLUDING WITHOUT LIMITATION, LOST PROFITS, RESULTING FROM THIS
AGREEMENT, INCLUDING THE MANUFACTURE, SALE, OR USE OF THE INVENTIONS OR LICENSED PRODUCTS OR
RUTGERS INTELLECTUAL PROPERTY OR LICENSEE INVENTIONS LICENSED HEREUNDER.
	 
	13.5.	 	Except as set forth in Sections 13.1 and 13.2, nothing in this Agreement shall be construed
as:






	 	(i)	 	a warranty or representation by Rutgers as to the validity or scope of any
Rutgers’ Patent Rights or a warranty or representation by Licensee as to the validity
or scope of any patent that may claim a Licensee Invention; or
	 
	 	(ii)	 	a warranty or representation that anything made, used, sold or otherwise
disposed of under any license granted in this Agreement is or will be free from
infringement of patents or other intellectual property rights of third parties; or
	 
	 	(iii)	 	an obligation to bring or prosecute actions or suits against third parties
except as provided in Article 16; or
	 
	 	(iv)	 	conferring by implication, estoppel or otherwise any license or rights under
any patents or other intellectual property of Rutgers or Licensee other than Rutgers’
Patent Rights and Rutgers’ Technology and Licensee Inventions; or
	 
	 	(v)	 	an obligation to furnish any know-how not provided in Rutgers intellectual
property licensed hereunder.




 









 











14. PATENT PROSECUTION AND MAINTENANCE





	14.1.	 	Rutgers shall diligently prosecute and maintain the United States pending patent
applications and issued patents comprising the Rutgers’ Patent Rights using counsel of its
choice. Rutgers’ counsel shall take instructions only from Rutgers. Prior to making filings,
and providing reasonable time for Licensee to comment and consult with Rutgers, Rutgers shall
keep Licensee informed and apprised of the continuing prosecution of Rutgers’ Patent Rights.
Licensee agrees to keep this documentation confidential.
	 
	14.2.	 	Rutgers shall give due consideration to amending any patent application to
include claims reasonably requested by Licensee to protect the Licensed Products
contemplated to be sold under this Agreement. If Rutgers elects not to file any patent
application included within the Rutgers’ Patent Rights in any country, or decides to abandon
any pending application or issued patent the Rutgers’ Patent Rights in any country, then
Rutgers shall provide reasonable advance written notice to Licensee, and Licensee shall have
the right at its sole expense to assume control of the preparation, filing, prosecution and
maintenance of such patent application or patent at its own expense (provided Rutgers shall
remain the owner thereof).
	 
	14.3.	 	All unreimbursed costs incurred by Rutgers after the Effective Date for preparing, filing,
prosecuting and maintaining the patent applications and/or patents included within the
Rutgers’ Patent Rights, including but not limited to patent applications and patents covered
by Rutgers’ Patent Rights and included pursuant to Section 14.4 shall be borne by Licensee.
Such costs shall be payable by Licensee within thirty (30) days of the billing date. If
Licensee fails to pay patent costs in a timely manner as required in this Section, Rutgers
may, at its discretion, require Licensee to pay estimated patent costs in advance as a
condition for maintaining this license. If Rutgers licenses the Rutgers’ Patent Rights to a
third party licensee(s), then Licensee and such third party licensee(s) shall each share in
such patent costs incurred after the dates of such third party license(s). In principle, such
sharing shall be pro rata, so long as the relative markets and scope of license of this
License and such third party license(s) are approximately the same; if not, Rutgers reserves
the right to make an equitable allocation of patents costs among licensees. Should a
situation arise, where protection of the patent rights licensed under this Agreement requires
seeking a declaratory judgment, filing an interference or other exceptional action with
potential high costs associated, Rutgers shall consult with Licensee to determine whether
Licensee wishes to Rutgers to pursue such action (at Licensee’ expense). Should Licensee
choose not to pursue such actions, Rutgers reserves the right, but is under no obligation to
pursue such action at its own expense.
	 
	14.4.	 	Rutgers shall, at the request of Licensee, file, prosecute, and maintain patent applications
and patents covered by Rutgers’ Patent Rights in foreign countries. Licensee consents to the
filing of all PCT and foreign patent applications that have already been filed as of the
Effective Date. Rutgers shall provide Licensee




 









 





	 	 	copies of all PCT and foreign patent
applications that have been filed within thirty (30) days after the Effective Date. Licensee
shall notify Rutgers within six (6) months of the filing of the corresponding United States
application of its decision to obtain all other foreign patents. This notice shall be in
writing and shall identify the countries desired. The absence of such a notice from Licensee
shall be considered by Rutgers to be an election not to request foreign rights.
	 
	14.5.	 	Licensee’s obligation to underwrite and to pay patent prosecution costs shall continue for
so long as this Agreement remains in effect, provided, however, that Licensee may terminate
its obligations with respect to any given patent
application or patent upon three (3) months’ prior written notice to Rutgers. Rutgers shall
use reasonable efforts to curtail future patent costs when such a notice is received from
Licensee. Licensee shall promptly pay patent costs which cannot be so curtailed.
Commencing on the effective date of such notice, Rutgers may continue prosecution and/or
maintenance of such application(s) or patent(s) at its sole discretion and expense, and
Licensee shall have no further right or licenses thereunder.
	 
	14.6.	 	Rutgers shall have the right to file patent applications at its own expense in any country
or countries in which Licensee has not elected to pay Rutgers’ prosecution and maintenance
costs for securing patent rights or in which Licensee’s license to the Rutgers’ Patent Rights
has terminated. So long as this Agreement remains in effect such applications and resultant
patents shall not be freely licensed by Rutgers to third parties within the Licensed Field.
If the Licensee’s license to the Rutgers’ Patent Rights has terminated such applications and
resultant patents shall not be subject to this Agreement and may be freely licensed by Rutgers
to third parties together with non-exclusive rights to the Rutgers’ Technology in such
countries. In the event Rutgers intends to exercise this right, it shall notify Licensee in
writing of its intent to do so and the countries where it intends to file patent applications.
Licensee shall then have thirty (30) days to maintain its license to such patent rights and
applications (“Prosecution Funding Right”) by notifying Rutgers in writing that it wishes to
again add such countries to this Agreement and to pay the applicable prosecution and
maintenance costs for doing so.





15. PATENT MARKING





	15.1.	 	Licensee shall mark all Licensed Products made, used, sold imported, exported, or otherwise
disposed of under the terms of this Agreement, and/or their containers, in accordance with the
applicable patent marking laws.




 









 











16. PATENT INFRINGEMENT





	16.1.	 	In the event that Licensee shall learn of the substantial infringement of any patent
licensed under this Agreement in the Licensed Field, Licensee shall notify Rutgers in writing
and shall provide Rutgers with reasonable evidence of such infringement. Both parties to this
Agreement agree that during the period and in a jurisdiction where Licensee has exclusive
rights under this Agreement, neither will notify a third party of the infringement of any of
Rutgers’ Patent Rights in the Licensed Field, without first obtaining consent of the other
Party, which consent shall not be unreasonably denied, provided that for purposes of this
Section, Licensee’s Sublicensees shall not be deemed to be “third parties” as that term used
herein. Both parties shall use their diligent efforts in cooperation with each other to
terminate such infringement without litigation.
	 
	16.2.	 	Licensee may request that Rutgers take legal action against the infringement of Rutgers’
Patent Rights in the Licensed Field. Such request shall be made in writing and shall include
reasonable evidence of such infringement and damages to Licensee. If the infringing activity
has not been abated within ninety (90) days following the effective date of such request,
Rutgers shall have the right to commence suit on its own account or refuse to commence such
suit. However, in the event Rutgers elects to bring suit in accordance with this paragraph,
Licensee may thereafter join such suit at its own expense. Rutgers shall give notice of its
election in writing to Licensee by the end of the one-hundredth (100th) day after receiving
notice of such request from Licensee. However, Licensee may thereafter bring suit for patent
infringement in its own name and if required for standing purposes in the name of Rutgers if
and only if Rutgers refuses to commence suit and if the infringement occurred during the
period and in a jurisdiction where Licensee had exclusive rights under this Agreement.
However, in the event Licensee elects to bring suit in accordance with this paragraph, Rutgers
may thereafter join such suit at its own expense. Such legal action as is decided upon shall
be at the expense of the party on account of whom suit is brought.
	 
	16.3.	 	Each party agrees to cooperate with the other in litigation proceedings instituted hereunder
but at the expense of the party on account of whom suit is brought for out-of-pocket expenses.
Such litigation shall be controlled by the party bringing the suit. Each party may be
represented by counsel of its choice at its own expense. Any recovery or damages or
settlement amounts derived from any such action shall first be applied to reimburse each party
for the total cost of such action, with the remainder to be allocated among the parties as
follows: the party bringing the action shall receive from the other party, and the other party
shall assign to the party bringing the action eighty percent (80%) of such remainder, and the
other party shall receive from the party bringing the action, and the party bringing the
action shall assign twenty percent (20%) of such remainder to the other party.




 









 











17. INDEMNIFICATION AND INSURANCE





	17.1.	 	To the maximum extent permitted by law, Licensee shall indemnify, hold harmless and defend
Rutgers, its governors, trustees, officers, employees, students, agents and the Inventors
(“Indemnified Parties”) against any and all third party claims, suits, losses, liabilities,
damages, costs, fees and expenses (including reasonable attorneys’ fees) (collectively,
“Claims”) resulting from or arising out of the exercise of the rights granted under this
license or any sublicense by Licensee, its Affiliates and Sublicensees. This indemnification
shall include, but is not limited to, any and all claims alleging products liability. Rutgers
shall remain liable for, and the foregoing indemnification obligation shall not include, any
claims of infringement arising out of the Inventions, the Rutgers’
Patent Rights or the Rutgers’ Technology and any claims arising out of the gross negligence,
to the extent negligence is applicable, or willful misconduct of Rutgers.
	 
	17.2.	 	Throughout the term of this Agreement, and to the extent applicable from and after the date
of first transfer of a Licensed Product and for the life of all Licensed Products used or
transferred, Licensee shall maintain commercially issued policies of insurance, or a program
of self-insurance if such program is approved in advance in writing by an authorized
representative of Rutgers, which provide coverage and limits as required by statute or as
necessary to prudently insure the activities and operations of Licensee. The commercial
general liability insurance policy, or liability self-insurance program, shall include the
interests of Rutgers as an additional insured and provide coverage limits of not less than
$5,000,000 combined single limits as respects premises, operations, contractual liability and,
if applicable, liability arising out of products and/or completed operations. Licensee shall
provide Rutgers with certificates of insurance for commercially insured policies, or a letter
from Licensee’s independent auditors stating its opinion as to the adequacy of any
self-insurance program.
	 
	17.3.	 	It is expressly agreed that the insurance or self-insurance are minimum requirements which
shall not in any way limit the liability of Licensee and shall be primary coverage. Any
insurance or self-insurance program maintained by Rutgers shall be excess and noncontributory.
	 
	17.4.	 	Rutgers shall promptly notify Licensee in writing of any claim or suit brought against
Rutgers in respect of which Rutgers intends to invoke the provisions of Article 17. Licensee
shall keep Rutgers informed on a current basis of its defense of any claims pursuant to
Article 17.




 









 












18. NOTICES





	18.1.	 	Any notice or payment required to be given to either party shall be deemed to have been
properly given and to be effective (a) on the date of delivery if delivered in person, (b)
five (5) days after mailing if mailed by first-class certified mail, postage paid and
deposited in the United States mail, to the respective addresses given below, or to such other
address as it shall designate by written notice given to the other party, (c) on the date of
delivery if delivered by express delivery service such as Federal Express or DHL or (d) or as
otherwise agreed upon in writing by the parties.





	 	 	 

	 	  In the case of Licensee:  

	REVA Medical, Inc.
	 

	 	5751 Copley Drive, Suite B

San Diego, CA 92111
	 

	 	Attention: President
	 

	 	Telefax No. (858) 966-3099
	 

	 	Telephone No (858) 966-3000
	 
	 	 
	 	  In the case of Rutgers:

	Rutgers, The State University
	 

	 	Office of Technology Commercialization
	 

	 	Attention: Director
	 

	 	ASB III, 3 Rutgers Plaza
	 

	 	New Brunswick, NJ 08901
	 

	 	Telefax No. (732) 932-0115
	 

	 	Telephone No (732) 932-0146






19. ASSIGNABILITY





	19.1.	 	Neither this Agreement nor any right or obligation hereunder is assignable in whole or part
by any party without the prior written consent of the other party. Notwithstanding the
foregoing, either party may assign this Agreement, without such consent, to a third party in
connection with a Change of Control of or by the assigning party. This Agreement shall inure
to the benefit of each of the party’s successors and assignees, provided that such successors
or assignees assume the party’s obligations under this Agreement.





20. LATE PAYMENTS





	20.1.	 	In the event any amounts due Rutgers hereunder, including but not limited to royalty
payments, fees and patent cost reimbursements, are not received when due, Licensee shall pay
to Rutgers interest charges at a rate of ten (10) percent per annum, compounded monthly, or
the highest rate permitted by law, if less than ten (10) percent. Such interest shall be
calculated from the date payment was due until actually received by Rutgers.




 









 











21. WAIVER





	21.1.	 	It is agreed that failure to enforce any provisions of this Agreement by a party shall not
be deemed a waiver of any breach or default hereunder by the other party. It is further agreed
that no express waiver by either party hereto of any breach or default of any of the covenants
or agreements herein set forth shall be deemed a waiver as to any subsequent and/or similar
breach or default.





22. FAILURE TO PERFORM





	22.1.	 	In the event of a failure of performance due under the terms of this Agreement and if it
becomes necessary for either party to undertake legal action against the other on account
thereof, then the prevailing party shall be entitled to reasonable
attorneys’ fees in addition to costs and necessary disbursements.





23. PRIOR AGREEMENTS





	23.1.	 	This Agreement supersedes and replaces in its entirety the 2004 License Agreement (as
amended) between the parties; provided that Section 2.6 and Articles 9, 14 and 21 of the 2004
License Agreement shall survive.





24. GOVERNING LAWS





	24.1.	 	THIS AGREEMENT SHALL BE INTERPRETED AND CONSTRUED IN ACCORDANCE WITH THE LAWS OF THE STATE
OF NEW JERSEY WITHOUT REGARD TO ITS CONFLICTS OF LAW PROVISIONS, but the scope and validity of
any patent or patent application shall be governed by the applicable laws of the country of
such patent or patent application.





25. FOREIGN GOVERNMENT APPROVAL OR REGISTRATION





	25.1.	 	If this Agreement or any associated transaction is required by the law of any nation to be
either approved or registered with any governmental agency, Licensee shall assume all legal
obligations to do so and the costs in connection therewith. Rutgers shall provide reasonable
assistance to Licensee regarding compliance with the same at Licensee’s cost.





26. EXPORT CONTROL LAWS





	26.1.	 	Licensee shall observe all applicable United States and foreign laws with respect to the
transfer of Licensed Products and related technical data to foreign




 









 








	 	 	countries, including,
without limitation, the International Traffic in Arms Regulations (ITAR) and the Export
Administration Regulations. Rutgers shall provide reasonable assistance to Licensee regarding
compliance with the same at Licensee’s cost.





27. CONFIDENTIALITY





	27.1.	 	Each receiving party (“Recipient”)






	 	(i)	 	shall not use any Confidential Information of the other party (“Discloser”)
except for the sole purpose of performing this Agreement,
	 
	 	(ii)	 	shall safeguard the same against disclosure to others with the same degree of
care as it exercises with its own information of a similar nature, but using at least
reasonable diligent efforts and
	 
	 	(iii)	 	shall not disclose or permit the disclosure of Discloser Confidential
Information to others (except to its employees, agents or consultants who are bound by
a like obligation of confidentiality) without the express written permission of
Discloser, except that Recipient shall not be prevented from using or disclosing any
Confidential Information:






	 	(a)	 	which Recipient can demonstrate by written records was previously
known to it; or
	 
	 	(b)	 	which is now, or becomes in the future, information generally
available to the public in the form supplied, other than through acts or
omissions of Recipient; or
	 
	 	(c)	 	which is lawfully obtained by Licensee from sources independent of
Discloser who were entitled to provide such information to Recipient; or
	 
	 	(d)	 	which is required by law to be disclosed by Recipient.




If Recipient learns or believes that any person who has had access to the Confidential Information
of Discloser has violated or intends to violate the confidentiality or use restrictions of this
Agreement, Recipient shall immediately notify Discloser and shall cooperate with Discloser in
seeking injunctive or other equitable relief against any such person. The obligations under this
Section 27.1 shall remain in effect during the term of this Agreement and for five (5) years from
the date of termination or expiration of this Agreement.




28. MISCELLANEOUS





	28.1.	 	The headings of the several articles are inserted for convenience of reference only and are
not intended to be a part of or to affect the meaning or interpretation of this Agreement.




 









 







	28.2.	 	This Agreement will not be binding upon the parties until it has been signed below on behalf
of each party by a duly authorized representative.
	 
	28.3.	 	No amendment or modification hereof (including without limitation adding additional
Inventions and patents to Exhibit A) shall be valid or binding upon the parties unless made in
writing and signed on behalf of each party by a duly authorized representative.
	 
	28.4.	 	This Agreement, including the Exhibits attached hereto, embody the sole, entire and final
understanding of the parties and shall supersede all previous and contemporaneous
communications, representations or understandings, either oral or written, between the parties
relating to the subject matter hereof.
	 
	28.5.	 	Licensee shall not enter into any agreements relating to this Agreement with Rutgers
Inventors or other Rutgers employees or students in contravention of the legal rights or
policies of Rutgers.
	 
	28.6.	 	In case any of the provisions contained in this Agreement shall be held to be invalid,
illegal or unenforceable in any respect,






	 	(i)	 	such invalidity, illegality or unenforceability shall not affect any other
provisions hereof,
	 
	 	(ii)	 	the particular provision, to the extent permitted by law, shall be reasonably
construed and equitably reformed to be valid and enforceable and if the provision at
issue is a commercial term, it shall be equitably reformed so as to maintain the
overall economic benefits of the Agreement as originally agreed upon by the parties,
and
	 
	 	(iii)	 	this Agreement shall be construed as if such invalid or illegal or
unenforceable provisions had never been contained herein.






	28.7.	 	Rutgers shall have the right to terminate this Agreement forthwith by giving written notice
of termination to Licensee at any time upon or after the filing by Licensee of a petition in
bankruptcy or insolvency, or upon or after any adjudication that Licensee is bankrupt or
insolvent, or upon or after the filing by Licensee of any petition or answer seeking judicial
reorganization, readjustment or arrangement of the business of Licensee under any law relating
to bankruptcy or insolvency, or upon or after the appointment of a receiver for all or
substantially all of the property of Licensee, or upon or after the making of any assignment
or attempted assignment for the benefit of creditors, or upon or after the institution of any
proceeding by Licensee or passage of any resolution by Licensee for the liquidation or winding
up of Licensee’s business or for termination of its corporate life.
	 
	28.8.	 	Neither party or its Affiliates shall originate any publicity, news release or other public
announcement, written or oral, relating to this Agreement or the existence




 









 







	 	 	of an arrangement
between the parties or the terms and conditions of this Agreement, except as required by law,
without the prior written approval of the other party, which approval shall not be
unreasonably withheld. Notwithstanding the foregoing, disclosures may be made by either party






	 	(i)	 	to its accountants, banks, financing sources, lawyers and other professional
advisors, provided that such parties undertake in writing to keep such information
confidential, or
	 
	 	(ii)	 	as required by applicable laws and regulations, including those of the U.S.
Securities and Exchange Commission, or
	 
	 	(iii)	 	to governmental agencies with respect to the tax treatment or tax structure
contemplated by this Agreement, or
	 
	 	(iv)	 	to actual or prospective Sublicensees or assignees.






	28.9.	 	This Agreement may be executed in any number of counterparts, each of which shall be deemed
an original, but all of which together shall constitute one and the same instrument.
	 
	28.10.	 	Nothing herein shall be deemed to constitute one party as the agent or representative of the
other party or both parties as joint ventures or partners. Each party as an independent
contractor.




 









 






IN WITNESS WHEREOF, both Rutgers and Licensee have executed this Agreement by their duly
authorized.




	 	 	 	 	 	 	 

	REVA Medical, Inc.	 	Rutgers, The State University of New Jersey,

Office of Technology Commercialization
	 
	 	 	 	 	 	 
	By

	 	/s/ Robert K. Schultz
	 	By
	 	/s/ Dipanjan Nag
	 

	 	 
	 	 	 	 
	 

	 	(Signature)	 	 

	 	(Signature)
	 

	 	Robert K. Schultz	 	 

	 	Dipanjan Nag
	 

	 	President	 	 

	 	Executive Director Office of Technology
Commercialization
	 
	 	 	 	 	 	 
	 

	 	 7-1-2010	 	 

	 	 7/8/10
	 

	 	(Date)	 	 

	 	(Date)






 









 






EXHIBIT A.





 











 





     



Exhibit A



This Exhibit A lists Inventions covering a wide range of polymer compositions. These Inventions are included in this Agreement only to the extent they apply to “Licensed Polymers”, as defined in Section 1.10 of this Agreement. Claims that are not applicable and claims that relate to uses
outside the Licensed Field as defined in Section 1.8 of this agreement are excluded. Exhibit A will be periodically updated by Rutgers and Licensee to include Improvements.



Exhibit A includes U.S. Patent Number(s) listed and any reissues, extensions (including governmental equivalents thereto), divisionals, renewals, substitutions, continuations, continuations-in-part, reexaminations, and any other pending, issued or hereafter filed, foreign counterpart of any
such applications corresponding to all of the foregoing, owned or controlled by Rutgers, and any disclosures, U.S. provisional patent applications, patent registrations, utility models, registered or unregistered designs, Improvements with respect Polycarbonates, and Rutgers Technology with
respect to Polycarbonates (information, know-how, data rights, trade secrets, mask works, and physical objects to the extent reasonably necessary or useful to practice the Inventions) that is patentable or non-patentable.



Legend: Fox: Fox Rothschild LLP; CRBCP: Caesar, Rivise, Bernstein, Cohen & Pokotilow, Ltd.; KMOB: Knobbe, Martens, Olson & Bear, LLP.; RSU: Rutgers, The State University of New Jersey; Integra LS: ; N/A: Not Applicable; Inventors (RSU = Rutgers Inventors; REVA = Licensee Inventors, Joint =
Rutgers and Licensee Inventors); % REVA Patent Costs refers to current share of patent costs as Rutgers has other licensees for the same patents but different licensed fields or claims.




Designation: The following patents are subject to the license terms of Article 1.8(i).




	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	Fox	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	% REVA	 	 	 	 
	 	 	 	 	(70439, 74584)	 	 	 	 	 	 	 	Patent	 	Patent	 	Patent No. or	 	Patent	 	 	 	Patent Cost	 	Patent	 	 
	#	 	Fox short #	 	or CRBCP	 	RSU#	 	Type	 	Status	 	Application #	 	Filing Date	 	Publication No.	 	Expiry Date	 	Inventors	 	Sept.09	 	Assignee	 	Patent Title
	1

	 	***
	 	***
	 	88-0525-1
	 	New
	 	Issued
	 	***
	 	***
	 	***
	 	12/25/07
	 	RSU
	 	***
	% 	RSU
	 	Polyiminocarbonate synthesis
	2

	 	***
	 	***
	 	89-0530-1
	 	New
	 	Issued
	 	***
	 	***
	 	***
	 	03/24/09
	 	RSU
	 	***
	% 	RSU
	 	Synthesis of amino acid-derived bioerodible polymers
	3

	 	***
	 	***
	 	91-0304-1
	 	DIV
	 	Issued
	 	***
	 	***
	 	***
	 	08/18/09
	 	RSU
	 	***
	% 	RSU
	 	Polyiminocarbonate synthesis
	4

	 	***
	 	***
	 	89-0529-1
	 	New
	 	Issued
	 	***
	 	***
	 	***
	 	03/16/10
	 	RSU
	 	***
	% 	RSU
	 	Poly(N-substituted iminocarbonate)
	5

	 	***
	 	***
	 	92-0108-1
	 	DIV
	 	Issued
	 	***
	 	***
	 	***
	 	03/31/10
	 	RSU
	 	***
	% 	RSU
	 	Synthesis of Amino Acid-Derived Bioerodible Polymers
	6

	 	***
	 	***
	 	95-0410-DD1
	 	DIV
	 	Reissued as

RE 37,795
	 	***
	 	***
	 	***
	 	06/12/10
	 	RSU
	 	***
	% 	RSU
	 	Synthesis of tyrosine derived diphenol monomers
	7

	 	***
	 	***
	 	99-0095
	 	Reissue
	 	Reissue
	 	***
	 	***
	 	***
	 	06/12/10
	 	RSU
	 	***
	% 	RSU
	 	Synthesis of tyrosine derived diphenol monomers
	8

	 	***
	 	***
	 	92-1119-1
	 	DIV
	 	Issued
	 	***
	 	***
	 	***
	 	09/07/10
	 	RSU
	 	***
	% 	RSU
	 	Poly(N-phenyl urethane) from poly(N-substituted

iminocarbonate)
	9

	 	***
	 	***
	 	92-0624-1
	 	DIV
	 	Issued
	 	***
	 	***
	 	***
	 	11/23/10
	 	RSU
	 	***
	% 	RSU
	 	Polyiminocarbonate synthesis
	10

	 	***
	 	***
	 	95-0410-D
	 	CIP
	 	Reissued as

RE 37,160
	 	***
	 	***
	 	***
	 	12/24/13
	 	RSU
	 	***
	% 	RSU
	 	Synthesis of tyrosine derived diphenol monomers
	11

	 	***
	 	***
	 	99-0105
	 	Reissue
	 	Reissue
	 	***
	 	***
	 	***
	 	12/24/13
	 	RSU
	 	***
	% 	RSU
	 	Syntheses tyrosine-derived diphenol MMRS
	12

	 	***
	 	***
	 	95-0615-1
	 	New
	 	Issued
	 	***
	 	***
	 	***
	 	11/27/15
	 	RSU
	 	***
	% 	RSU
	 	Copolymers of tyrosine-based polycarbonate and
poly(alkylene oxide)
	13

	 	***
	 	***
	 	95-0615-1-CIP
	 	New
	 	Issued
	 	***
	 	***
	 	***
	 	11/27/15
	 	RSU
	 	***
	% 	RSU
	 	Copolymers of tyrosine-based polyarylates and
poly(alkylene oxides)
	14

	 	***
	 	***
	 	00-0116 (USDIV)
	 	DIV
	 	Issued
	 	***
	 	***
	 	***
	 	11/27/15
	 	RSU
	 	***
	% 	RSU
	 	Copolymers of tyrosine-based polyarylates and
poly(alkylene oxides)
	15

	 	***
	 	***
	 	RU 96-0606-1
	 	US np
	 	Issued
	 	***
	 	***
	 	***
	 	02/18/18
	 	RSU
	 	***
	% 	RSU
	 	Monomers derived from hydroxy acids and polymers
prepared therefrom
	16

	 	***
	 	***
	 	97-0037 (USA)
	 	New
	 	Issued
	 	***
	 	***
	 	***
	 	04/07/18
	 	RSU
	 	***
	% 	RSU
	 	Biodegradable, anionic polymers derived from the

amino acid L-tyrosine
	17

	 	***
	 	***
	 	03-075 (USA)
	 	DIV
	 	Issued
	 	***
	 	***
	 	***
	 	11/06/18
	 	RSU
	 	***
	% 	RSU
	 	Radio-opaque polymer biomaterials
	18

	 	***
	 	***
	 	04-127 (US)
	 	CONT
	 	Issued
	 	***
	 	***
	 	***
	 	11/06/18
	 	RSU
	 	***
	% 	RSU
	 	Radio-opaque polymer biomaterials (device claims)
	19

	 	***
	 	***
	 	03-075
	 	CONT
	 	Issued
	 	***
	 	***
	 	***
	 	11/06/18
	 	RSU
	 	***
	% 	RSU
	 	Radio-opaque polymeric medical devices
	20

	 	***
	 	***
	 	98-0012A
	 	US np
	 	Issued
	 	***
	 	***
	 	***
	 	11/28/18
	 	RSU
	 	***
	% 	RSU
	 	Radio-opaque polymer biomaterials
	21

	 	***
	 	***
	 	04-165 (USA)
	 	New
	 	Pending
	 	***
	 	***
	 	***
	 	 	 	Joint
	 	***
	% 	RSU
	 	Inherently radiopaque polymeric products for

embolotherapy
	22

	 	***
	 	***
	 	RU 03-175

or 05-125
	 	New
	 	Pending
	 	***
	 	***
	 	***
	 	 	 	Joint
	 	***
	% 	RSU
	 	Radiopaque polymeric stents






 









 






     



	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	Fox	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	% REVA	 	 	 	 
	 	 	 	 	(70439, 74584)	 	 	 	 	 	 	 	Patent	 	Patent	 	Patent No. or	 	Patent	 	 	 	Patent Cost	 	Patent	 	 
	#	 	Fox short #	 	or CRBCP	 	RSU#	 	Type	 	Status	 	Application #	 	Filing Date	 	Publication No.	 	Expiry Date	 	Inventors	 	Sept.09	 	Assignee	 	Patent Title
	23

	 	***
	 	***
	 	04-118 (US)
	 	CONT
	 	Pending
	 	***
	 	***
	 	 	***	 	 	 	 	RSU
	 	***
	%  	RSU
	 	Radio-opaque polymer biomaterials
	24

	 	***
	 	***
	 	RU 08-025
	 	New
	 	Pending
	 	***
	 	***
	 	 	***	 	 	 	 	Joint
	 	***
	%  	RSU
	 	N-Methyl Substituted Amine (N-Substituted Monomers
and Polymers)
	25

	 	***
	 	***
	 	TBD
	 	prov
	 	Pending
	 	***
	 	***
	 	 	.	 	 	 	 	Rutgers
	 	***
	%  	Pending
	 	Imine Monomers And Polymers Thereof 
(Polyimide
Carbonates)
	26

	 	***
	 	***
	 	98-0012
	 	CONT
	 	Pending
	 	***
	 	***
	 	 	***	 	 	 	 	RSU
	 	***
	%  	RSU
	 	Radio-opaque polymer biomaterials
	27

	 	***
	 	***
	 	RU 08-037
	 	PCT (US designated)
	 	Pending
	 	***
	 	***
	 	 	 	 	 	 	 	Rutgers
	 	***
	%  	Pending
	 	Bioresorbable Polymers Synthesized From Monomer

Analogs Of Natural Metabolites 
(based on Fox-201 provisional 61/097,494)
	28

	 	***
	 	***
	 	97-0037
	 	CONT of 6,120,491
	 	Pending
	 	***
	 	***
	 	 	***	 	 	 	 	RSU
	 	***
	%  	RSU
	 	Biodegradable, Anionic Polymers Derived From the

Amino Acid L-tyrosine
	29

	 	N/A
	 	N/A
	 	RU08-037
	 	Technology

Know-How
	 	Unfiled
	 	N/A
	 	N/A
	 	 	N/A	 	 	N/A
	 	RSU
	 	N/A
	 	RSU
	 	Tech Transfer on 01/15/2008: New Amino Acid Monomer
(i.e., tetra-iodinated monomers)






Designation: The following patents are subject to the license terms of Article 1.8(ii).




	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	Fox	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	(70439, 74584)	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	% REVA	 	 	 	 
	 	 	 	 	or CRBCP	 	 	 	 	 	 	 	Patent	 	Patent	 	Patent No. or	 	Patent	 	 	 	Patent Cost	 	Patent	 	 
	#	 	Fox short #	 	or KMOB	 	RSU#	 	Type	 	Status	 	Application #	 	Filing Date	 	Publication No.	 	Expiry Date	 	Inventors	 	Sept.09	 	Assignee	 	Patent Title
	1

	 	N/A
	 	***
	 	REVA case
	 	New
	 	Issued
	 	***
	 	***
	 	 	***	 	 	08/10/25
	 	REVA
	 	***
	%  	REVA
	 	Inherently Radiopaque Bioresorbable Polymers For

Multiple Uses
	2

	 	N/A
	 	***
	 	REVA case
	 	New
	 	Pending
	 	***
	 	***
	 	 	***	 	 	 	 	REVA
	 	***
	%  	REVA
	 	N-Substituted Monomers and Polymers (Alkylated
Other)
	3

	 	***
	 	***
	 	TBD
	 	US
	 	Pending
	 	***
	 	***
	 	 	 	 	 	 	 	Joint
	 	***
	%  	Pending
	 	Inherently Radio-Opaque Polymers For Medical
Devices (IRPLP’s)
(based on Fox-212 provisional 61/104,724)
	4

	 	***
	 	***
	 	TBD
	 	PCT
	 	Pending
	 	***
	 	***
	 	 	 	 	 	 	 	Joint
	 	***
	%  	Pending
	 	Inherently Radio-Opaque Polymers For Medical
Devices (IRPLP’s)
(based on Fox-212 provisional 61/104,724)
	5

	 	***
	 	***
	 	TBD
	 	US
	 	Pending
	 	***
	 	***
	 	 	 	 	 	 	 	Joint
	 	***
	%  	Pending
	 	Phase-Separated Biocompatible Polymer Compositions

For Medical Uses (FTTPs) 
(based on Fox-295 provisional 61/104,728)
	6

	 	***
	 	***
	 	TBD
	 	PCT
	 	Pending
	 	***
	 	***
	 	 	 	 	 	 	 	Joint
	 	***
	%  	Pending
	 	Phase-Separated Biocompatible Polymer Compositions

For Medical Uses (FTTPs)

(based on Fox-295 provisional 61/104,728)
	7

	 	***
	 	***
	 	TBD
	 	prov
	 	Pending
	 	***
	 	***
	 	 	 	 	 	 	 	Joint
	 	***
	%  	Pending
	 	Tyrosine-Derived Biocompatible Polymers for
 Medical
Devices (Flexi-Ty)
	8

	 	***
	 	***
	 	TBD
	 	prov
	 	Pending
	 	***
	 	***
	 	 	 	 	 	 	 	Joint
	 	***
	%  	Pending
	 	Compliant Biocompatible Polymer Compositions for
Medical Uses (Carbonate Monomers , Broader version
of Flexi-DAT (PolyT-T))






 









 






     


Legend: Fox: Fox Rothschild LLP; CRBCP: Caesar, Rivise, Bernstein, Cohen & Pokotilow, Ltd.; KMOB: Knobbe, Martens, Olson & Bear, LLP.; RSU: Rutgers, The State University of New Jersey; Integra LS: ; N/A: Not Applicable; Inventors (RSU = Rutgers Inventors; REVA = Licensee
Inventors, Joint = Rutgers and Licensee Inventors); % REVA Patent Costs refers to current share of patent costs as Rutgers has other licensees for the same patents but different licensed fields or claims.




Designation: The following patents are subject to the license terms of Article 1.8(ii).




	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	Fox	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	(70439, 74584)	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	% REVA	 	 	 	 
	 	 	 	 	or CRBCP	 	 	 	 	 	 	 	Patent	 	Patent	 	Patent No. or	 	Patent	 	 	 	Patent Cost	 	Patent	 	 
	#	 	Fox short #	 	or KMOB	 	RSU#	 	Type	 	Status	 	Application #	 	Filing Date	 	Publication No.	 	Expiry Date	 	Inventors	 	Sept.09	 	Assignee	 	Patent Title
	9

	 	***
	 	***
	 	TBD
	 	 	 	Develop PR
	 	Not yet filed
	 	 	 	 	 	 	 	 	 	Joint
	 	***
	%  	TBD
	 	Iodinated Benzyl Esters
	10

	 	***
	 	***
	 	TBD
	 	 	 	Unfiled
	 	Not yet filed
	 	 	 	 	 	 	 	 	 	Joint
	 	***
	%  	TBD
	 	N-Alkyl Supermonomers
	11

	 	 	 	Unassigned
	 	TBD
	 	 	 	Unfiled
	 	Not yet filed
	 	 	 	 	 	 	 	 	 	Joint
	 	***
	%  	TBD
	 	Fracture Toughened PL Carbonates (FTPLPs)





TBD: to Be Determined




	 	 	 	 	 	 	 	 	 

	REVA Medical, Inc.	 	Rutgers, The State University of New Jersey,	 	 
	 
	 	 	 	 	 	 	 	 
	 	 	 	 	Office of Technology Commercialization	 	 
	 
	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	By

	 	/s/ Robert Shultz
 

	 	By
	 	/s/ Yair Harel
 

	 	 
	 	 	(Signature)	 	 	 	(Signature)	 	 
	 
	 	 	 	 	 	 	 	 
	Robert Schultz, President & COO	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	7-25-10	 	7/23/10	 	 
	 	 	 	 	 
	(Date)	 	(Date)	 	 
	 
	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	Exhibit A Version  1 (Original)