exv10w16



 







Exhibit 10.16




RESEARCH AGREEMENT NO. LLCT-41718



This agreement (“AGREEMENT”) is entered into this 2nd day of January 2007, by and
between THE REGENTS OF THE UNIVERSITY OF CALIFORNIA, on behalf of its Irvine campus (“UNIVERSITY”)
through its employee Dr. Hans Keirstead of the Reeve-Irvine Research Center (“INVESTIGATOR”) and
LifeLine Cell Technology LLC, with offices at 157 Surfview Drive, Pacific Palisades, CA 90272
(“SPONSOR”). UNIVERSITY and SPONSOR shall be collectively referred to as the Parties and agree as
follows:





	1.	 	SCOPE OF WORK. The work to be performed under this AGREEMENT shall be in accordance with
Exhibit A (“RESEARCH”), attached hereto and Incorporated herein as Exhibit A. Dr. Hans
Keirstead is the UNIVERSITY’s Principal Investigator and will be responsible for the
direction of all effort hereunder in accordance with applicable UNIVERSITY policies.
	 
	2.	 	PERIOD OF PERFORMANCE. The work under this AGREEMENT shall be performed during the period
beginning November 20, 2006 and ending November, 20, 2008 unless extended by mutual written
agreement.
	 
	3.	 	BUDGET. SPONSOR will pay all direct and indirect costs of the RESEAERCH, including an amount
equivalent to a pro-rata share of the Principal Investigator’s salary, up to a total estimated
cost of $375,723. If at any time UNIVERSITY has reason to believe that the cost of the
RESEARCH will be greater than estimated, UNIVERSITY shall notify SPONSOR In writing to that
effect, giving a revised budget of the cost to complete the RESEARCH. SPONSOR shall not be
obligated to reimburse UNIVERSITY for the costs incurred in excess of the amount referenced
above unless and until SPONSOR has notified UNIVERSITY in writing that additional funds will
be provided. Upon expenditure of the agreed upon amount of this award, UNIVERSITY’s obligation
to continue performance of the project shall cease.
	 
	4.	 	PAYMENT. SPONSOR will make payments in accordance with the following schedule:





          Upon
signature of this AGREEMENT 20% of the amount referenced in Section 3

           Quarterly thereafter                     10% of the amount referenced in Section 3





Checks shall be made payable to “The Regents of the University of California” and shall
reference this AGREEMENT number. Payments shall be forwarded to Contracts and Grants
Accounting, Accounting Officer, 111 Academy Way, Suite 210, University of California, Irvine,
California 92697-1050.



5. MATERIALS





5.1 SPONSOR shall provide to the UNIVERSITY the Materials described on Exhibit A, (together
with all progeny, unmodified derivatives and parts thereof, collectively called the
“MATERIALS”), for use under this AGREEMENT. The UNIVERSITY hereby acknowledges that, as between
SPONSOR and the UNIVERSITY, SPONSOR is the sole owner or licensee of the Materials, and SPONSOR
warrants it has the right to provide the MATERIALS to UNIVERSITY.




 









 









5.2 The UNIVERSITY shall have a non-exclusive, non-transferable right to possess, maintain, and
use the MATERIALS, and any CONFIDENTIAL INFORMATION to conduct the RESEARCH at the research
laboratory and location described in Exhibit A. The UNIVERSITY shall not use the MATERIALS
for any other purpose.




5.3 THE UNIVERSITY UNDERSTANDS THAT MATERIALS ARE PROVIDED SOLELY FOR THE RESEARCH USE ONLY,
AND THE MATERIALS HAVE NOT YET BEEN APPROVED FOR HUMAN USE. THE UNIVERSITY SHALL NOT
ADMINISTER THE MATERIALS TO HUMANS IN ANY MANNER OR FORM.




5.4 The UNIVERSITY shall not transfer the MATERIALS or any CONFIDENTIAL INFORMATION to
any third party or to any other laboratory or location, without the prior express written
consent of SPONSOR. The UNIVERSITY shall limit transfer and disclosure of the MATERIALS, and any
CONFIDENTIAL INFORMATION, only on a need to know basis, as reasonably necessary for the
RESEARCH, to its employees who have been informed of the terms and obligations under this
AGREEMENT. The UNIVERSITY shall notify SPONSOR promptly upon discovery of any unauthorized use
or disclosure thereof.




5.5 Upon the request of SPONSOR, the UNIVERSITY promptly shall return all remaining MATERIALS to
SPONSOR.




5.6 The UNIVERSITY shall comply with all laws and governmental rules, regulations and guidelines
which are applicable to the MATERIALS or the use thereof, Including biosafety procedures, and
with any safety precautions accompanying the MATERIALS.




5.7 The UNIVERSITY hereby acknowledges that the MATERIALS are experimental in nature, and are
provided “AS IS.” SPONSOR MAKES NO REPRESENTATIONS OR WARRANTIES, EXPRESS OR IMPLIED, WITH
RESPECT TO THE LINES, OR THE USE THEREOF, OR PATENT RIGHTS APPLICABLE THERETO. SPONSOR
DISCLAIMS ALL IMPLIED WARRANTIES, INCLUDING WITHOUT LIMITATION ANY WARRANTY OF MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE OR NONINFRINGEMENT.



6. CONFIDENTIALITY.





6.1 The SPONSOR shall disclose specific information relating to the derivation, culture and
characteristics of the MATERIALS (“CONFIDENTIAL INFORMATION”). The Sponsor Shall disclose
information only necessary to the work and, if any such information is considered confidential,
the SPONSOR shall clearly mark such Information “Confidential”. If orally disclosed, SPONSOR will
reduce such INFORMATION to writing and will clearly identify the INFORMATION as “Confidential”
and provide it to the UNIVERSITY within thirty calendar days of disclosure. To the extent
permissible by law, the UNIVERSITY will maintain confidentiality of the SPONSOR’S INFORMATION
based on the UNIVERSITY’S established practice and methods for maintaining such INFORMATION.
However, the period of confidentiality cannot exceed five years.




6.2 The confidentiality obligations of the UNIVERSITY shall not apply to the extent the
UNIVERSITY is required to disclose information by applicable law, regulation or court order;



 









 







provided, however, that the UNIVERSITY shall give SPONSOR prompt written notice and
sufficient opportunity to object to such disclosure, or to request confidential treatment.




6.3 The confidentiality obligations of the UNIVERSITY shall not apply to such information
as the UNIVERSITY can establish by contemporaneous written documentation (i) to have been
publicly known prior to disclosure of such information by SPONSOR to the UNIVERSITY, or prior to
the UNIVERSITY’s development of the Results, as the case may be, (ii) to have become publicly
known, without fault on the part of the UNIVERSITY, (iii) to have been received by the
UNIVERSITY at any time from a source, other than SPONSOR, rightfully having possession of and
the right to disclose such information, (iv) to have been otherwise known by the UNIVERSITY
prior to disclosure of such information by SPONSOR to the UNIVERSITY, or prior to the
UNIVERSITY’s development of the Results, as the case may be, or (v) to have been independently
developed by employees of the UNIVERSITY without access to or use the Materials or of
information disclosed by SPONSOR to the UNIVERSITY.



7. RIGHTS IN DATA AND REPORTS.





7.1 UNIVERSITY shall own all technical reports, data and information developed under this
AGREEMENT and shall have the right to copyright, publish, disclose, disseminate and use, in
whole or in part, any data and information developed under this
AGREEMENT.




7.2 The UNIVERSITY shall keep SPONSOR informed of progress of the RESEARCH. On a quarterly
basis, UNIVERSITY shall provide to SPONSOR a written report describing the RESEARCH performed
and all of the data and results from the RESEARCH. UNIVERSITY shall also submit to SPONSOR a
comprehensive final report within ninety (90) days of termination of the RESEARCH.




7.3 SPONSOR shall have the right to use the technical reports, data and information delivered
hereunder by UNIVERSITY for research and evaluation purposes, and in scientific publications and
scientific communications, as per section 7.4




7.4 SPONSOR agrees that it will not use the names of UNIVERSITY or its employees in any
advertisement, press release or publicity with reference to this AGREEMENT without the prior
written approval of UNIVERSITY, which shall not be unreasonably withheld. Each party shall have
the right to acknowledge the other party’s contribution under this AGREEMENT in scientific
publications and other scientific communications.




	8.	 	PUBLICATION. For the purpose of identifying patentable inventions not covered by
pre-existing patents and identifying any inadvertent disclosure of
CONFIDENTIAL INFORMATION, UNIVERSITY shall submit a copy of all proposed publications, papers,
and any other written disclosure, such as abstracts for public presentations, of such data or
information to SPONSOR at least thirty (30) days prior to submission for publication or
disclosure to a third party. In the event SPONSOR determines patentable subject matter is
disclosed in such data or information, it shall immediately notify UNIVERSITY and, if
UNIVERSITY concurs, publication or disclosure will be withheld for a period not to exceed
ninety (90) days to permit preparation and filing of appropriate patent application(s). If
SPONSOR identifies CONFIDENTIAL INFORMATION in the publication or disclosure and notifies
UNIVERSITY, UNIVERSITY shall remove the CONFIDENTIAL INFORMATION from the publication or
disclosure.





 









 




9. PATENT RIGHTS.





9.1 All rights to inventions, discoveries or other commercially useful research products
arising from the RESEARCH conducted under this AGREEMENT (“INVENTIONS”) shall be disposed of as
follows. Inventorship of inventions shall be determined according to U.S. patent law. All
rights to INVENTIONS developed solely by one or more employees of the UNIVERSITY shall belong
to the UNIVERSITY, as provided by UNIVERSITY policy (“UNIVERSITY INVENTIONS”) and shall be
disposed of in accordance with UNIVERSITY policy and the terms of this AGREEMENT. All rights to
INVENTIONS developed solely by one or more employees of SPONSOR shall belong solely to SPONSOR
(“SPONSOR INVENTIONS”), All rights to INVENTIONS developed by one or more employees of both
SPONSOR and the UNIVERSITY shall be Jointly owned by SPONSOR and the
UNIVERSITY, as provided by UNIVERSITY policy (“JOINT INVENTIONS”).




9.2 UNIVERSITY shall promptly disclose to SPONSOR in writing any INVENTIONS arising under this
AGREEMENT. SPONSOR shall hold such disclosure on a confidential basis and will not disclose the
information to any third party without consent of the UNIVERSITY. SPONSOR shall advise
UNIVERSITY in writing within sixty (60) days of disclosure to SPONSOR whether or not it wishes
to secure a commercial license to any UNIVERSITY INVENTION or to UNIVERSITY’s interest in any
JOINT INVENTION. If SPONSOR elects to secure an exclusive license, SPONSOR shall assume all
costs associated with securing and maintaining patent protection for
such INVENTION(s), whether or
not Letters Patent issue. SPONSOR shall have ninety (90) days from the date of election to
conclude a license agreement with UNIVERSITY, Said license shall require diligent performance by
SPONSOR for the timely commercial development and early marketing of such INVENTIONS, and
include SPONSOR’S continuing obligation to pay patent cost. The license shall be on commercially
reasonable terms and conditions, including a reasonable royalty rate negotiated in
good faith based on reasonable factors, including without limitation, the parties’ respective
contributions, the stage of development of the INVENTION, relevant industry standards and
additional royalty obligations owing to third parties. General business terms applicable to a
license agreement with respect to INVENTIONS are attached hereto as Exhibit B. If such license
agreement is not concluded in said period, UNIVERSITY has no further obligations to SPONSOR. If
SPONSOR does not elect to secure such license, rights to the INVENTIONS disclosed hereunder
shall be disposed of in accordance with UNIVERSITY policies with no further obligation to
SPONSOR.




9.3 Nothing contained in this AGREEMENT shall be deemed to grant either directly or by
implication, estoppel, or otherwise any license under any patents, patent applications or other
proprietary interests of any other invention, discovery or improvement of either party.




			
	10.	 	EQUIPMENT. In the event that UNIVERSITY purchases equipment under this
AGREEMENT, title to such equipment shall vest in UNIVERSITY.






			
	11.	 	 INDEMNIFICATION. SPONSOR agrees to defend, indemnify and hold UNIVERSITY, its officers,
employees and agents, harmless from and against any and all liability, loss, expense,
attorneys’ fees, or claims for injury or damages arising out of the performance of this
AGREEMENT but only in proportion to and to the extent such liability, loss, expense,
attorneys’ fees, or claims for injury or damages are caused by or result from the negligent or
intentional acts or omissions of SPONSOR, its officers, agents, or
employees. UNIVERSITY agrees to defend, indemnify and hold SPONSOR, its officers, employees
and agents, harmless from and against any and all liability, loss, expense, attorneys’ fees,
or





 









 






claims for injury or damages arising out of the performance of this AGREEMENT but only in
proportion to and to the extent such liability, loss, expense, attorneys’ fees, or claims for
injury or damages are caused by or result from the negligent or intentional acts or omissions
of UNIVERSITY, its officers, agents, or employees.




	12.	 	NOTICE. Whenever any notice is to be given hereunder, it shall be in writing and shall be
deemed received, if delivered by courier on a business day, on the day delivered, or on the
second business day following mailing, if sent by first-class certified or registered mail,
postage prepaid, to the following addresses:





	 	 	 	 	 
	 

	 	University:
	 	The Regents of the University of California
	 

	 	 	 	Sponsored Projects Administration
	 

	 	 	 	University of California, Irvine
	 

	 	 	 	300 University Tower
	 

	 	 	 	Irvine, CA 92697-7600
	 

	 	 	 	Fax: (949) 824-2094
	 

	 	 	 	Phone: (949) 824-2214
	 

	 	Attention:
	 	Daniela L. Hagen, Principal Contract & Grant Officer
	 
	 	 	 	 
	 

	 	Sponsor:
	 	LifeLine Cell Technology LLC
	 

	 	 	 	157 Surfview Drive 
	 

	 	 	 	Pacific Pallsades, CA 90272
	 

	 	Attention:
	 	Ken AldRich







	13.	 	NO ASSIGNMENT. The UNIVERSITY may not assign or otherwise transfer this AGREEMENT,
whether by voluntarily, by operation of law or otherwise, without the prior express written
consent of SPONSOR. Any purported assignment or transfer of this AGREEMENT in violation of
this section shall be void
	 
	14.	 	TERMINATION. This AGREEMENT may be terminated by UNIVERSITY or SPONSOR upon the giving of
ninety (90) days prior written notice to the other if either party determines, in its
discretion, that the RESEARCH is no longer academically, technically, or commercially
feasible, Upon receipt of such notice of termination, UNIVERSITY shall exert its best efforts
to limit or terminate any outstanding financial commitments for which SPONSOR is to be liable.
SPONSOR shall reimburse UNIVERSITY for all costs incurred by it for the RESEARCH, including
without limitation, all uncancelable obligations.
	 
	15.	 	APPLICABLE LAW. This AGREEMENT shall be governed by the laws of the State of
California.
	 
	16.	 	ENTIRE AGREEMENT. This AGREEMENT represents the entire understanding of the Parties with
respect to the subject matter, No change, modification, extension, termination or waiver of
this AGREEMENT, or any of the provisions herein contained, shall be valid unless made in
writing and signed by duly authorized representatives of the Parties hereto.





 









 






     IN WITNESS WHEREOF duly authorized representatives of the Parties have entered into this
Research AGREEMENT as of the date first written above.



	 	 	 	 	 	 	 	 	 
	THE REGENTS OF THE UNIVERSITY 

OF CALIFORNIA	 	 	 	LIFELINE CELL TECHNOLOGY LLC
	 
	 	 	 	 	 	 	 	 
	By

	 	/s/ Daniela L. Hagen
	 	 	 	By
	 	/s/ Jeffrey Janus
	 

	 	 
	 	 	 	 	 	 
	 

	 	 (signature)
	 	 	 	 	 	 (signature)
	By

	 	Daniela L. Hagen
	 	 	 	By
	 	Jeffrey Janus
	 

	 	 
	 	 	 	 	 	 
	Title

	 	Principal Contract & Grant Officer
	 	 	 	Title
	 	CEO
	 

	 	 
	 	 	 	 	 	 
	Date

	 	January 5, 2007
	 	 	 	Date
	 	February 20, 2007
	 

	 	 
	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	READ & ACKNOWLEDGED	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	By

	 	/s/ Hans S. Keirstead	 	 	 	 	 	 
	 

	 	 	 	 	 	 	 	 
	 

	 	 (signature)	 	 	 	 	 	 
	By

	 	Hans S. Keirstead	 	 	 	 	 	 
	 

	 	 	 	 	 	 	 	 
	Title

	 	Investigator	 	 	 	 	 	 
	 

	 	 	 	 	 	 	 	 
	Date

	 	January 5, 2007	 	 	 	 	 	 
	 

	 	 	 	 	 	 	 	 





 









 







EXHIBIT A




Materials





Two
different frozen human embryonic stem cell lines (Lines or Cells) will be
provided by the SPONSOR to the UNIVERSITY. These Lines will be labeled as follows:




Line 1 LCC-1 11n      18-08-05




Line 2 N6 8n              30-01-06



Permitted Research




Project 1: Assess the growth rate and transfectability of embryonic stem cells




Scope of Work




     The goal of this project is to determine methods for reliable and repeatable genetic
modulation of embryonic stem cells provided by the Sponsor, with the intent of producing
genetically engineered cell lines. The project would involve conducting background work on the
reagents and techniques commonly used to transfect hESCs. Genetic transfection would be conducted on
two lines, to demonstrate robustness of technique.



     hESC lines would be amplified to produce sufficient quantities for experimental manipulations.
Amplification will be conducted using one or more of the following conditions: mouse fibroblast
feeder layers, conditioned media from mouse fibroblast feeder layers, human fibroblast feeder
layers, conditioned media from human fibroblast feeder layers, or using conditions free from mouse
or rodent feeder layers or conditioning.



     Amplified hESC lines would be transfected using lentiviral or adenoviral or adeno-associated
viral systems. This will involve isolation or acquisition of human sequences to labeling genes,
construction of vectors, growth of vectors, insertion of vectors in test cells that are not hESC
lines, followed by insertion of vectors in hESC lines.



     Transfected lines would be assessed for growth rate, growth characteristics, and stability of
gene insertion over multiple passages. This will involve passaging cells at standardized dilutions,
measurement of cell quantity at standardized time points post-passaging, assessment of morphology
at standardized time points post-passaging, and assessment of the percentage of cells expressing
labeling genes at standardized time points post-passaging.



     This project Will last for 6 months.



Budget:




	 	 	 	 
	Personnel:
	$	22,030	
	Equipment:
	$	0	
	Travel
	$	0	
	Animals and supplies:
	$	9,450	
	Other:
	$	0	
	Total direct costs:
	$	31,480	
	Indirect:
	$	16,055	
	GRAND TOTAL:
	$	47,535	






 









 





Project 2: Teratoma assessment of the generation of three germ
layers



Scope of Work




     The goal of this project is to assess the ‘stem cell-ness’ of the Sponsor’s hESC lines. A bona
fide stem cell line will generate teratomas when transplanted into particular animal models, and
generate the three primary germ layers. This project will assess the Sponsor’s hESC lines for their
capability to generate teratomas and the three primary germ layers.



     Teratomas will be generated by an outsourced commercial entity in animal models, and the
dissected teratomas sent by courier to the Keirstead laboratory. For histological assessment,
teratomas will be fixed and prepared for staining and histology using standard histological
protocols. Tissue sections will be analyzed using immunohistochemistry for the expression of
appropriate markers of endoderm, ectoderm and mesoderm to confirm that the hESCs are able of
generating the three primary germ layers.



     This project will last for 2 months.



Budget




	 	 	 	 	
	Personnel:
	$	11,015	
	Equipment:
	$	0	
	Travel
	$	0	
	Supplies:
	$	3, 450	
	Other:
	$	0	
	Total direct
costs:
	$	14,465	
	Indirect:
	$	7,377	
	GRAND TOTAL:
	$	21,842	






Project 3: Differentiate Sponsor’s hESC cells into retinal progenitor cells, and test in
animal models




Scope of Work




     The goal of this proposal is the clinically compliant derivation and functional
characterization of high purity populations of retinal pigment epithelial cells and photoreceptors.



     The first aim will test the hypothesis that the Sponsor’s hESC lines will differentiate into
retinal progenitor cells following culture manipulation. We will conduct multiple culture
manipulations followed by assays of differentiation potential in order to determine whether hESCs
will differentiate into retinal pigment epithelial cells (RPEs) and photoreceptors in high purity.
This research will be conducted in an FDA-compliant manner under the supervision of Regulatory
Quality Assurance Officers in the Keirstead lab.



     The
second aim will test the hypothesis that hESC-derived retinal progenitor cells
transplanted into rodent models of retinal degeneration will redistribute throughout the retina,
integrate and differentiate. We will transplant hESC-derived retinal progenitor cells into the
transgenic RCS rat model of macular degeneration, or the transgenic
S334ter-3 rat model of macular
degeneration, in order to determine whether the transplanted population has the ability to survive,
integrate and differentiate into the host retina.



     The third aim will test the hypothesis that hESC-derived retinal progenitor cells transplanted
into rodent models of retinal degeneration will facilitate anatomical regeneration and behavioral
recovery. We will transplant hESC-derived retinal progenitor cells into the transgenic RCS rat



 









 




model of macular degeneration or the transgenic S334ter-3 rat model of macular degeneration
and conduct functional electrophysiological studies in order to determine whether the treatment
facilitates recovery, and whether the transplanted cells contribute to that recovery.




          This project will last for one year.




Budget




	 	 	 	 	 
	Personnel:
	 	$	161,802	
	Equipment:
	 	$	0	
	Travel
	 	$	3,800	
	Animals and supplies:
	 	$	32,825	
	Other:
	 	$	4,451	
	Total direct costs:
	 	$	202,878	
	Indirect:
	 	$	103,468	
	GRAND TOTAL:
	 	$	306,346	






 









 








EXHIBIT A



Materials Provided by Sponsor 

Parthenogenetically derived Embryonic
Stem Cells for UC:



1) phESC-1 (this strain has also been referred to as phESC 2P)


One Vial — Cells are in clumps; number of cells difficult to determine. Call to discuss
initial culture conditions, suggest human fibroblast feeders.



These are
cryopreserved in P11.These were derived without animal origin components.




	 	 	 	 	 	 	 
	On the label:
	 	LLC-1	 	 	 	 
	 
	 	11n	 	 	 	 
	 
	 	18-08-05	 	 	 	 





2) phESC-6 (this strain has also been referred to as phESC 9P)


One Vial — Cells are in clumps; number of cells difficult to determine. Call to discuss initial
culture conditions, suggest human fibroblast feeders. 

These are cryopreserved in
P8.




	 	 	 	 	 
	On the label:

	 	N6
	 	 
	 

	 	8n	 	 
	 

	 	30-01-06	 	 






 









 





EXHIBIT B




General Business Terms Applicable to License Agreement




TERMS FOR LICENSE AGREEMENT

UNIVERSITY OF CALIFORNIA, IRVINE



SCOPE: An exclusive or non-exclusive (at Licensee’s election) field-of-use license for the
life of the patents in all territories where the University owns patent rights, covering all
patents and patent applications to which Licensee desires a license.



SUBLICENSE: The license will provide sublicensing under commercially reasonable terms, with
passthrough of a percentage of net sublicense income to the University (“Revenue Share”).



LICENSE
ISSUE AND LICENSE MAINTENANCE FEES: There will be a License issue Fee payable on execution.



ROYALTIES: Royalties on net sales of products covered by the University’s patent and proprietary
rights licensed to Licensee will be payable on pending patent
applications and on issued patents.



MINIMUM ANNUAL ROYALTIES: There will be minimum annual royalties, payable at the beginning of each
calendar year following public sale, creditable against earned
royalties for that calendar year.



DILIGENCE: The license will provide a timetable by which Licensee will file for approval from
appropriate United States and corresponding foreign regulatory authorities for permission to sell
products as commercially appropriate. Reasonable modifications to the development milestones and
timetable may be made by Licensee If Licensee is continuing in good faith to conduct research and
development and/or product development efforts; material modifications shall be made by mutual
consent of the parties, provided that the University’s consent will not be unreasonably withheld.
If Licensee does not meet these development milestones, the University will have the option of
converting an exclusive license to a non-exclusive license, or, if the license is a non-exclusive
license, of terminating it after allowing licensee six (6) months to cure.



PROGRESS AND ROYALTY REPORTS: Licensee shall submit periodic (no more than quarterly) reports to
the University covering Licensee’s (and sublicensees’) activities related to the development and
testing of licensed products and the obtaining of governmental approvals necessary for marketing.
After the first commercial sale of a licensed product, Licensee shall make quarterly royalty
reports.



PATENT PROSECUTION AND MAINTENANCE: The University will own and diligently prosecute and maintain
all patents and patent applications included in the license. The University will keep Licensee
informed in a timely manner of prosecution matters and the parties will mutually agree upon a
strategy for the prosecution and maintenance of such patents. The University will provide Licensee
with a copy of any such applications prior to submission to the United States Patent and Trademark
Office (“USPTO”) (or equivalent foreign agency) and a copy of all written communications to or from
the USPTO (or equivalent foreign agency) within thirty (30) days after receipt thereof. Licensee
shall have the opportunity to review and comment upon any such application or communication and
Licensee’s comments shall be incorporated




 









 




therein unless inconsistent with the mutually agreed strategy. If Licensee is an exclusive
licensee, Licensee will reimburse the University for all past and future costs of patent
prosecution and maintenance. If Licensee is a non-exclusive licensee, Licensee will reimburse the
University for no more than one-half (1/2) of all past and future costs of patent prosecution ans
maintenance



PATENT INFRINGEMENT: Licensee may notify the University of any infringement of the licensed
patents of which it becomes aware. The University will have the first right to sue infringes, and
if it does not take action within 100 days, Licensee is free to sue in its own name and at its own
expense.



INDEMNIFICATION:
Licensee will indemnify the University against any claims arising from the
exercise of the license. The University will require Licensee to
carry insurance to back up such
indemnification, and name the University as an additional insured.



WARRANTIES: The University provides no warranty of merchantability or fitness of the licensed
technology for a particular purpose or any other warranty. The University does not represent that
the licensed products will not infringe any patent or other proprietary right.



USE OF
NAME: Unless required by law, the use by Licensee of the name, “The Regents of the University
of California” or the name of any campus of the University of California is expressly prohibited.



ASSIGNABILITY: The license agreement shall be personal to Licensee and assignable by Licensee only
with the written consent of the University, which consent will not be unreasonably withheld or
delayed. Notwithstanding the foregoing, Licensee may assign to an Affiliate, or in the course of
any sale or transfer of all or substantially all of the business or assets to which this Agreement
relates.



LATE PAYMENTS: In the event that payments are not received by the University when due, Licensee
shall pay to the University interest charges at a rate of ten
(10) percent per annum.



GOVERNING LAWS: The license agreement shall be interpreted and construed in accordance with the
laws of the State of California. The scope and validity of any patent or patent application
included in the license agreement will be governed by the applicable laws of the country of such
patent or patent application.



EXPORT CONTROL LAWS: Licensee shall observe all applicable U.S. and foreign laws with respect to
transfer of products and related technical data to foreign countries.



ADDITIONAL TERMS: Additional terms of the license agreement shall be negotiated in good faith by
Licensee and the University.