Athena Environmental Sciences, Inc.
COMMERCIAL EVALUATION LICENSE AGREEMENT
The ACES™ Signal Sequence Selection and YebF Protein Export Systems are
based on discoveries made by scientists at the University of Alberta and
Athena Environmental Sciences, Inc. (AthenaES) and are covered by U.S. and
International Patents and Patent Applications. This includes US S/N
11/203,168, US 6,022,952 and US 6,335,178 and all related international
filings. AthenaES holds the exclusive license to the YebF technology, a
non-exclusive license to Tat protein secretion pathway and retains ownership
of the vectors and reagents of the ACES™ expression kits.
Read the Agreement below carefully before purchasing or using the ACES™
Expression Systems and complete the Registered User form. The agreement
provides a one year evaluation period which grants to Registered Users of
commercial entities a non-exclusive, nontransferable Commercial Evaluation
License. After the evaluation period a Commercial Use License is required.
A copy of the Commercial Evaluation License is available via download at
www.athenaes.com or by email at email@example.com. Companies should
contact Athena Environmental Sciences, Inc. at 410-455-6319 or firstname.lastname@example.org
for a Commercial Use License.
To become a Registered User, complete the form below and clicking on the
“I Accept” button. By doing so you, the Registered User, agree to the terms
and conditions of the Commercial Evaluation License. If you do not agree to
all of the terms and conditions of this Agreement, click the “Decline” or “I
Do Not Accept” button. YOU AGREE THAT YOUR PURCHASE AND USE OF THE MATERIALS
ACKNOWLEDGES THAT YOU HAVE READ THIS AGREEMENT, UNDERSTAND IT, AND AGREE TO BE
BOUND BY ITS TERMS AND CONDITIONS. Please return by mail two copies of this
agreement, signed by a duly authorized officer of the company, to Athena
Environmental Sciences, Inc., 1450 South Rolling Road, Baltimore, MD 21227
within 90 days of purchase.
This Agreement is entered into between Athena Environmental Sciences, Inc.,
hereinafter referred to as “AES”, a corporation of Maryland, having an
address at 1450 South Rolling Road, Baltimore, Maryland 21227, U.S.A.
and the Registered User (“Licensee”) being an employee or officer of a
corporation. The Agreement authorizes the Registered User to use the Material
specified in Section 1 below according to the terms and conditions set forth below.
By purchasing the Materials the Licensee agrees to the terms and conditions of
“Licensed Patent Rights” means the right to use the subject technologies
of the following U.S. patent application(s) (including provisional
patent application(s)) or patents and all foreign counterparts as they
are associated with the licensed use of any Athena ES Complete Expression
System: US S/N 11/203,168, US 6,022,952 and US 6,335,178.
“Materials” means ACES™ Expression plasmids including but not limited to
pAES25, pAES30, 31, 32, 33, 34 and 35, and pAES40, including all progeny,
subclones, or unmodified derivatives thereof.
“Licensed Products” means any Athena ES Complete Expression System kit or
component, and Materials made by Licensee within the scope of the Licensed
“Licensed Field of Use” means expression and production of recombinant
proteins using the Licensed Products.
Licensee desires to obtain a license to evaluate the commercial applications of
the Materials and the Licensed Products and any component of the Licensed Patent Rights.
Licensee intends to conduct laboratory experiments under this Agreement to
evaluate the suitability for commercial development of inventions encompassed
by the Licensed Patent Rights, Materials or Licensed Products in the Licensed
Field of Use.
AES hereby grants to Licensee a nonexclusive, nontransferable license for evaluation
purposes only, within its research facilities, to use but not to sell the Materials
or the Licensed Products and products and processes encompassed within the scope
of a claim in the Licensed Patent Rights. Licensee is prohibited from sublicensing
the rights granted in this Agreement. Licensee agrees that any commercial or
industrial use or sale of any such products or processes, including any formalized
in-house screening programs, other than for evaluation purposes, shall terminate this
Agreement and be made only pursuant to the terms of a commercialization license to be
negotiated in good faith by the parties.
Licensee acknowledges that this Agreement does not permit Licensee to modify or alter
in any way the subject Materials, or Licensed Products other than inserting genes of
interest into the Materials for the sole purpose of expressing a protein of interest.
Licensee agrees to retain control over the Materials and the Licensed Products, and
not to distribute or disclose them to third parties without the prior written consent
In exchange for nominal consideration and the agreed upon purchase price for the
Materials, Licensed Patent Rights, and Licensed Products, AES agrees to the grant
of rights set forth in Paragraph 4.
This Agreement shall become effective when the last party to sign has executed this
Agreement. Use of the Materials, Licensed Patent Rights, or Licensed Products will
effectuate this Agreement. The Agreement shall expire twelve (12) months from its
effective date or upon written communication of the Licensee’s intent to commercialize
the use of the Materials, Licensed Products, or Licensed Patent Rights. Upon termination
or expiration of this Agreement, Licensee shall immediately return all Materials and
Licensed Products to AES or provide AES with written certification of their destruction,
unless Licensee has executed another license for the Materials, Licensed Products, or
Licensed Patent Rights.
Licensee acknowledges that third parties also may be evaluating the Licensed Patent
Rights, the Licensed Products, or the Materials for a variety of purposes. Should
Licensee apply for a license for any particular field of use, such license will be
negotiated in good faith at that time.
The following termination rights are in addition to the termination rights that may
be provided elsewhere in the Agreement:
Immediate Right of Termination. AES shall have the right to immediately terminate
this Agreement by giving written notice to Licensee in the event that Licensee
files a petition in bankruptcy or is adjudicated a bankrupt or insolvent, or
makes an assignment for the benefit of creditors or an arrangement pursuant to
any bankruptcy law, or if the Licensee discontinues or dissolves its business or
if a receiver is appointed for Licensee or for Licensee 's business and such
receiver is not discharged within ten (10) days;
Right to Terminate Upon Notice. AES may terminate this Agreement upon 30
days' written notice to the Licensee in the event of a breach of any provision
of this Agreement by the Licensee, provided that, during the 30-day period, the
Licensee fails to cure such breach.
Licensee agrees to submit in confidence a final report to AES within thirty (30) days of
termination or expiration of this Agreement outlining in general its results of commercial
evaluation of the Licensed Patent Rights, the Licensed Products, or the Materials
provided by this Agreement. Licensee shall submit the report to AES at the Mailing
Address for Agreement notices indicated on the Signature Page.
During the course of this Agreement, Licensee may have access to and acquire information
regarding the Materials, Licensed Products, or Licensed Patent Rights that is not
generally known by the public. Licensee agrees that any such information is confidential
and shall not be disclosed or exploited by Licensee.
AES agrees, to the extent permitted by law, to treat in confidence for a period of
three (3) years from the date of disclosure, any of Licensee's written information about
the Licensed Patent Rights, the Licensed Products, or the Materials that is stamped
“CONFIDENTIAL” except for information that was previously known to AES, that is or
becomes publicly available, or that is disclosed to AES by a third party without an
obligation of confidentiality.
Licensee acknowledges that AES reserves the right to audit Licensee’s use of the
Licensed Patent Rights, the Licensed Products, and Materials.
No warranties, express or implied, are offered as to the fitness for any purpose of the
materials or the licensed products provided to licensee under this agreement, or that the
licensed patent rights may be exploited without infringing other patent rights. Licensee
accepts license rights to the Licensed Patent Rights, the Licensed Products, and the
Materials “as is”, and AES does not offer any guarantee of any kind.
Licensee agrees to indemnify and hold harmless AES from any claims, costs, damages,
or losses that may arise from the practice of the Licensed Patent Rights or through the
use of the Licensed Products or the Materials. This paragraph is not applicable if
Licensee is a government agency within the United States.
Licensee agrees in its use of any Materials or the Licensed Products to comply with
all applicable statutes, regulations, and guidelines.
This Agreement shall be construed in accordance with the laws of the State of Maryland,
as interpreted and applied by the State of Maryland. Licensee agrees to be subject to
the jurisdiction of the State of Maryland.
This Agreement constitutes the entire understanding of AES and Licensee and supersedes
all prior agreements and understandings with respect to the Licensed Patent Rights,
the Materials and the Licensed Products.
This Agreement shall be assignable only with the express written consent of AES,
which will not be withheld in bad faith.
The provisions of this Agreement are severable, and in the event that any provision
of this Agreement shall be determined to be invalid or unenforceable under any controlling
body of law, the invalidity or unenforceability of any provision of this Agreement, shall
not in any way affect the validity or enforceability of the remaining provisions of this Agreement.
Paragraphs 5, 11, 12, 15, and 17 of this Agreement shall survive termination of this Agreement.
In Witness Whereof, the parties will have executed this Agreement on the dates set forth
in the signed and mailed copies. Any communication or notice to be given shall be forwarded
to the respective address listed below as well as the address provided of the "Licensee" in the
signed and mailed copies.
Mailing Address for Agreement notices:
Athena Environmental Sciences, Inc.
1450 South Rolling Road
Baltimore, Maryland 21227
As accepted by the Registered User listed in the online authorized user registration.