Exhibit 4.1
PURCHASE WARRANT
Issued to:
[_____]
Exercisable to Purchase
[_____] Shares of Common Stock
of
NEUROONE MEDICAL TECHNOLOGIES CORPORATION
Warrant No. [_____]
Dated: January 21, 2020
Void after January 21, 2030
THE WARRANT REPRESENTED BY THIS WARRANT
CERTIFICATE AND THE SHARES ISSUABLE UPON EXERCISE THEREOF HAVE NOT BEEN REGISTERED UNDER THE SECURITIES ACT OF 1933, AS AMENDED
(THE “SECURITIES ACT”), OR THE SECURITIES LAWS OF ANY STATE OR OTHER JURISDICTION. THE SECURITIES MAY NOT BE OFFERED,
SOLD, PLEDGED OR OTHERWISE TRANSFERRED, EXCEPT (1) PURSUANT TO AN EXEMPTION FROM REGISTRATION UNDER THE SECURITIES ACT OR (2) PURSUANT
TO AN EFFECTIVE REGISTRATION STATEMENT UNDER THE SECURITIES ACT, IN EACH CASE IN ACCORDANCE WITH ALL APPLICABLE STATE SECURITIES
LAWS AND THE SECURITIES LAWS OF OTHER JURISDICTIONS, AND, IN THE CASE OF A TRANSACTION EXEMPT FROM REGISTRATION, UNLESS THE COMPANY
HAS RECEIVED AN OPINION OF COUNSEL REASONABLY SATISFACTORY TO IT THAT SUCH TRANSACTION DOES NOT REQUIRE REGISTRATION UNDER THE
SECURITIES ACT AND SUCH OTHER APPLICABLE LAWS.
This is to certify
that, for value received and subject to the terms and conditions set forth below, the Warrantholder is entitled to purchase, and
the Company promises and agrees to sell and issue to the Warrantholder, at any time on or after the Initial Exercise Date and on
or before the Expiration Date, up to [_____] shares of Common Stock at the per share Exercise Price.
This Warrant Certificate
is issued by the Company pursuant to Section 2(b) of the Placement Agent Agreement, subject to the following terms and conditions:
1. Definitions
of Certain Terms. Except as may be otherwise clearly required by the context, the following terms have the following meanings:
(a) “Cashless
Exercise” means an exercise of a Warrant in which, in lieu of payment of the Exercise Price in cash, the Warrantholder elects
to receive a lesser number of Securities in payment of the Exercise Price, as determined in accordance with Section 2(b).
(b) “Commission”
means the Securities and Exchange Commission.
(c) “Common
Stock” means the common stock, $0.001 par value, of the Company.
(d) “Company”
means NeuroOne Medical Technologies Corporation.
(e) “Exercise
Price” means the price at which the Warrantholder may purchase one share of Common Stock or other Securities upon exercise
of a Warrant as determined from time to time pursuant to the provisions hereof, multiplied by the number of Securities as to which
the Warrant is being exercised. The Exercise Price is $1.87 per share of Common Stock.
(f) “Expiration
Date” has the meaning set forth in Section 2(a).
(g) “Initial
Exercise Date” has the meaning set forth in Section 2(a).
(h) “Offering
Materials” means the transaction documents and related investment materials described in the Placement Agent Agreement.
(i) “Offering”
means the offering of securities made pursuant to the Offering Materials and the Placement Agent Agreement.
(j) “Placement
Agent Agreement” means that certain Placement Agent Agreement, dated as of October 7, 2019, between the Company and Paulson
Investment Company, LLC.
(k) “Rules
and Regulations” means the rules and regulations of the Commission adopted under the Securities Act.
(l) “Securities”
means the securities obtained or obtainable upon exercise of the Warrant or securities obtained or obtainable upon exercise, exchange,
or conversion of such securities.
(m) “Securities
Act” means the Securities Act of 1933, as amended.
(n) “Warrant”
means the warrant evidenced by this certificate, any similar certificate issued in connection with the Offering, or any certificate
obtained upon transfer or partial exercise of the Warrant evidenced by any such certificate.
(o) “Warrant
Certificate” means a certificate evidencing the Warrant.
(p) “Warrantholder”
means a record holder of the Warrant or Securities.
2. Exercise
of Warrant.
(a) All
or any part of the Warrant represented by this Warrant Certificate may be exercised commencing on December 31, 2019 (the “Initial
Exercise Date”) and ending at 5:00 p.m. Pacific Time on the ten-year anniversary of the Initial Exercise Date (the “Expiration
Date”) by surrendering this Warrant Certificate, together with the Exercise Price and appropriate instructions, duly executed
by the Warrantholder or by its duly authorized attorney, at the office of the Company, [Address of Company]; or at such other office
or agency as the Company may designate. The date on which such instructions are received by the Company shall be the date of exercise.
If the Warrantholder has elected a Cashless Exercise, such instructions shall so state.
(b) If at any time
the Warrantholder elects a Cashless Exercise, the Warrantholder may surrender in payment of the Exercise Price, shares of Common
Stock equal in value to the Exercise Price by surrender of this Warrant at the principal office of the Company together with notice
of such election, in which event the Company shall issue to the Warrantholder a number of shares of Common Stock computed using
the following formula:
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X =
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Where:
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X =
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The number of shares of Common Stock to be issued to the Warrantholder pursuant to this Cashless Exercise
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Y =
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The number of shares of Common Stock in respect of which the Cashless Exercise election is made
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A =
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The fair market value of one share of Common Stock at the time the Cashless Exercise election is made
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B =
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The Exercise Price (as adjusted to the date of the Cashless Exercise)
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For purposes of this
Section 2(b), the fair market value of one share of Common Stock as of a particular date shall be determined as follows: (i) if
traded on a securities exchange, the value shall be deemed to be the closing price of the Common Stock on such exchange on the
day prior to the Cashless Exercise; (ii) if traded over-the-counter, the value shall be deemed to be the mean of the closing bid
and ask price of the Common Stock on the day prior to the Cashless Exercise; and (iii) if there is no active public market, the
value shall be the fair market value thereof, as determined in good faith by PIC and the Board of Directors of the Company.
(c) Subject
to the provisions below, upon receipt of notice of exercise, the Company shall promptly prepare or cause the preparation of certificates
for the Securities to be received by the Warrantholder upon completion of the Warrant exercise. After such certificates are prepared,
the Company shall notify the Warrantholder and, upon payment in full by the Warrantholder, in lawful money of the United States,
of the Exercise Price payable with respect to the Securities being purchased, or, in the case of a Cashless Exercise, upon deemed
surrender of Securities equal in value to the Exercise Price, deliver such certificates to the Warrantholder, or as per the Warrantholder’s
instructions, promptly after such funds are available, if applicable, and otherwise promptly thereafter. The Securities to be obtained
on exercise of the Warrant will be deemed to have been issued, and any person exercising the Warrant will be deemed to have become
a holder of record of those Securities, as of the date of receipt by the Company of (a) available funds in cash in payment
of the Exercise Price, or (b) notice of Cashless Exercise.
(d) If
fewer than all the Securities purchasable under the Warrant are purchased, the Company will, upon such partial exercise, execute
and deliver to the Warrantholder a new Warrant Certificate (dated the date hereof), in form and tenor similar to this Warrant Certificate,
evidencing that portion of the Warrant not exercised.
(e) Notwithstanding
the foregoing, in no event shall such Securities be issued, and the Company is authorized to refuse to honor the exercise of the
Warrant, if such exercise would result in the opinion of the Company’s Board of Directors, upon advice of counsel, in the violation
of any law.
3. Adjustments
in Certain Events. The number, class, and price of Securities for which this Warrant Certificate may be exercised are subject
to adjustment from time to time upon the happening of certain events as follows:
(a) If
the outstanding shares of the Company’s Common Stock are divided into a greater number of shares or a dividend in stock is paid
on the Common Stock, the number of shares of Common Stock for which the Warrant is then exercisable will be proportionately increased
and the Exercise Price will be proportionately reduced; and, conversely, if the outstanding shares of Common Stock are combined
into a smaller number of shares of Common Stock, the number of shares of Common Stock for which the Warrant is then exercisable
will be proportionately reduced and the Exercise Price will be proportionately increased. The increases and reductions provided
for in this Section 3(a) will be made with the intent and, as nearly as practicable, the effect that neither the percentage of
the total equity of the Company obtainable on exercise of the Warrants nor the price payable for such percentage upon such exercise
will be affected by any event described in this Section 3(a).
(b) In
case of any change in the Common Stock through merger, consolidation, reclassification, reorganization, partial or complete liquidation,
purchase of substantially all the assets of the Company, or other change in the capital structure of the Company, then, as a condition
of such change, lawful and adequate provision will be made so that the Warrantholder will have the right thereafter to receive
upon the exercise of the Warrant the kind and amount of shares of stock or other securities or property to which the Warrantholder
would have been entitled if, immediately prior to such event, the Warrantholder had held the number of shares of Common Stock obtainable
upon the exercise of the Warrant. In any such case, appropriate adjustment will be made in the application of the provisions set
forth herein with respect to the rights and interest thereafter of the Warrantholder, to the end that the provisions set forth
herein will thereafter be applicable, as nearly as reasonably may be, in relation to any shares of stock or other securities or
property thereafter deliverable upon the exercise of the Warrant. The Company will not permit any change in its capital structure
to occur unless the issuer of the shares of stock or other securities to be received by the holder of this Warrant Certificate,
if not the Company, agrees to be bound by and comply with the provisions of this Warrant Certificate.
(c) When
any adjustment is required to be made in the number of shares of Common Stock, other securities, or the property purchasable upon
exercise of the Warrant, the Company will promptly determine the new number of such shares or other securities or property purchasable
upon exercise of the Warrant and (i) prepare and retain on file a statement describing in reasonable detail the method used in
arriving at the new number of such shares or other securities or property purchasable upon exercise of the Warrant and (ii) cause
a copy of such statement to be mailed to the Warrantholder within thirty (30) days after the date of the event giving rise to the
adjustment.
(d) No
fractional shares of Common Stock or other Securities will be issued in connection with the exercise of the Warrant, and the number
of shares of Common Stock to be issued shall be rounded to the nearest whole number.
(e) If
securities of the Company or securities of any subsidiary of the Company are distributed pro rata to holders of Common Stock, such
number of securities will be distributed to the Warrantholder or its assignee upon exercise of its rights hereunder as such Warrantholder
or assignee would have been entitled to if this Warrant had been exercised prior to the record date for such distribution. The
provisions with respect to adjustment of the Common Stock provided in this Section 3 will also apply to the securities to which
the Warrantholder or its assignee is entitled under this Section 3(e).
(f) Notwithstanding
anything herein to the contrary, there will be no adjustment made hereunder on account of the sale by the Company of the Common
Stock or any other Securities purchasable upon exercise of the Warrant.
4. Reservation
of Securities. The Company agrees that the number of shares of Common Stock or other Securities sufficient to provide for the
exercise of the Warrant upon the basis set forth above will, at all times during the term of the Warrant, be reserved for issuance.
5. Validity
of Securities. All Securities delivered upon the exercise of the Warrant will be duly and validly issued in accordance with
their terms and, upon payment of the Exercise Price, will be fully paid and non-assessable. The Company will pay all documentary
and transfer taxes, if any, in respect of the original issuance thereof upon exercise of the Warrant.
6. Transferability.
(a) Subject
to compliance with any applicable securities laws, the Warrant may be transferred to individuals who are members, a partner, officer
or other representative or stakeholder of Paulson Investment Company, LLC. The Warrant may be divided or combined, upon request
to the Company by the Warrantholder, into additional Warrants evidencing the same aggregate number of Warrants. Any such transfer
shall be effected upon surrender of this Warrant Certificate at the principal office of the Company or its designated agent, together
with a written assignment of the Warrant substantially in the form attached hereto duly executed by the Holder or its agent or
attorney and funds sufficient to pay any transfer taxes payable upon the making of such transfer. Upon such surrender and, if required,
such payment, the Company shall execute and deliver a new Warrant Certificate or Warrant Certificates in the name of the assignee
or assignees, as applicable, and in the denomination or denominations specified in such instrument of assignment, and shall issue
to the assignor a new Warrant Certificate evidencing the portion of the Warrant not so assigned, and this Warrant Certificate shall
promptly be cancelled.
7. Securities
Act Compliance. The Warrantholder hereby represents: (a) that this Warrant and any Securities will be acquired for investment
for the Warrantholder’s own account and not with a view to the resale or distribution of any part thereof, and (b) that the Warrantholder
is an accredited investor as defined in Rule 501(a) of Regulation D promulgated under the Securities Act. In addition, as a condition
of its delivery of certificates for the Common Stock, the Company will require the Warrantholder to deliver to the Company representations
regarding the Warrantholder’s sophistication, investor status, investment intent, acquisition for its own account and such other
matters as are reasonable and customary for purchasers of securities in an unregistered private offering as set forth in the attached
Exercise Form. The Company may place conspicuously upon each certificate representing the Securities a legend substantially in
the following form, the terms of which are agreed to by the Warrantholder:
“THE SECURITIES
EVIDENCED BY THIS CERTIFICATE HAVE NOT BEEN REGISTERED UNDER THE SECURITIES ACT OF 1933, AS AMENDED (THE “SECURITIES ACT”),
OR THE SECURITIES LAWS OF ANY STATE OR OTHER JURISDICTION. THE SECURITIES MAY NOT BE OFFERED, SOLD, PLEDGED OR OTHERWISE TRANSFERRED
EXCEPT (1) PURSUANT TO AN EXEMPTION FROM REGISTRATION UNDER THE SECURITIES ACT OR (2) PURSUANT TO AN EFFECTIVE REGISTRATION
STATEMENT UNDER THE SECURITIES ACT, IN EACH CASE IN ACCORDANCE WITH ALL APPLICABLE STATE SECURITIES LAWS AND THE SECURITIES LAWS
OF OTHER JURISDICTIONS AND, IN THE CASE OF A TRANSACTION EXEMPT FROM REGISTRATION, UNLESS THE COMPANY HAS RECEIVED AN OPINION OF
COUNSEL REASONABLY SATISFACTORY TO IT THAT SUCH TRANSACTION DOES NOT REQUIRE REGISTRATION UNDER THE SECURITIES ACT AND SUCH OTHER
APPLICABLE LAWS.”
8. No
Rights as a Shareholder. Except as otherwise provided herein, the Warrantholder will not, by virtue of ownership of the Warrant,
be entitled to any rights of a shareholder of the Company but will, upon written request to the Company, be entitled to receive
such quarterly or annual reports as the Company distributes to its shareholders.
9. Notice.
Any notices required or permitted to be given hereunder will be in writing and may be served personally or by mail, including by
e-mail; and if served will be addressed as follows:
If to the Company to:
NeuroOne Medical Technologies Corporation
10901 Red Circle Drive, Suite 150
Minnetonka, MN 54343
Attention: David A. Rosa
Email: daver@neurooneinc.com
With a copy (that shall not constitute notice)
to:
Honigman LLP
650 Trade Centre Way Suite 200
Portage, Michigan 49002
Attention: Phillip D. Torrence
Facsimile: (269) 337-7703
Email: ptorrence@honigman.com
If to the Warrantholder:
c/o Paulson Investment Company, LLC
2141 W. North Ave., 2nd Floor
Chicago, Illinois 60647
Any notice so given
by mail will be deemed effectively given 48 hours after mailing when deposited in the United States mail, registered or certified
mail, return receipt requested, postage prepaid and addressed as specified above. Any notice given by e-mail must be accompanied
by confirmation of receipt, and will be deemed effectively given upon confirmation of such receipt. Any party may by written notice
to the other specify a different address for notice purposes.
10. Applicable
Law. This Warrant Certificate will be governed by and construed in accordance with the laws of the State of New York, without
reference to conflict of laws principles thereunder.
[Signature page follows.]
IN WITNESS WHEREOF,
the Company has caused this Warrant Certificate to be executed by its officer thereunto duly authorized as of the date first above
indicated.
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NeuroOne Medical Technologies Corporation
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By:
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Name:
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David A. Rosa
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Title:
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Chief Executive Officer and President
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[Placement Agent Warrant]
EXERCISE FORM
(To Be Executed by the Warrantholder
to Exercise the Warrant)
TO: [Company Name]
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1.
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The undersigned hereby irrevocably elects
to exercise the right to purchase _________ shares of Common Stock, represented by Warrant No. __________ as follows:
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☐
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Exercise for Cash. Pursuant to Section 2(a)
of the Warrant, the Holder hereby elects to exercise the Warrant for cash and tenders payment herewith (or has made a wire transfer)
to the order of [Company Name] in the amount of $____________.
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☐
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Cashless Exercise. Pursuant to Section 2(b)
of the Warrant, the Holder hereby elects to exercise the Warrant on a cashless basis.
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2.
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The undersigned requests that the applicable
number of shares of Common Stock be issued and delivered to the following address:
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Name:
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Address:
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Email:
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SSN:
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3.
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The undersigned understands, agrees and recognizes
that:
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(a)
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No federal or state agency has made any finding or determination as to the fairness of the investment
or any recommendation or endorsement of the securities.
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(b)
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All certificates evidencing the shares of Common Stock, if any, may bear a legend substantially
similar to the legend set forth in [Section 7] of the Warrant Certificate regarding resale restrictions.
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Representations
of the undersigned.
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5.
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The undersigned acknowledges that the undersigned has received, read and understood the Warrant
and agrees to abide by and be bound by its terms and conditions.
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6.
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(i) The undersigned has such knowledge and experience in business and financial matters that the
undersigned is capable of evaluating the Company and the proposed activities thereof, and the risks and merits of this prospective
investment.
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☐ YES ☐ NO
(ii)
If “No”, the undersigned is represented by a “purchaser representative,” as that term is defined in Regulation
D under the Securities Act of 1933, as amended (the “Securities Act”).
☐ YES ☐ NO
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7.
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(i) The undersigned is an “accredited investor,” as that term is defined in the Securities
Act.
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☐ YES ☐ NO
(ii) If “Yes,”
the undersigned comes within the following category of that definition (check one):
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The undersigned is a natural person whose present
net worth (or whose joint net worth with his or her spouse), excluding the value of the undersigned’s primary residence,
exceeds $1,000,000. For purposes of calculating the undersigned’s present net worth, the undersigned has included the following
as liabilities: (i) any indebtedness that is secured by the undersigned’s primary residence in excess of the estimated fair
market value of the undersigned’s primary residence at the time of the sale of the shares, and (ii) any incremental debt
secured by the undersigned’s primary residence that was incurred in the 60 days before the sale of the shares, other than
as a result of the acquisition of the undersigned’s primary residence.
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The undersigned is a natural person who had individual
income in excess of $200,000 in each of the last two years or joint income with the undersigned’s spouse in excess of $300,000
during such two years, and the undersigned reasonably expects to have the same income level in the current year.
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The undersigned is an officer or director of the
Company.
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The undersigned is a corporation or partnership not
formed for the specific purpose of acquiring the securities offered, with total assets in excess of $5,000,000.
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The undersigned is a trust with total assets in excess
of $5,000,000 whose purchase is directed by a person with such knowledge and experience in financial and business matters that
such person is capable of evaluating the merits and risks of the prospective investment.
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The undersigned is an entity, all of whose equity
owners are accredited investors under one or more of the categories above.
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8.
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The undersigned understands that the shares purchased hereunder have not been registered under
the Securities Act, in reliance upon the exemption from the registration requirements under the Securities Act pursuant to Section
4(2) of the Securities Act and Rule 506 promulgated thereunder; and, therefore, that the undersigned must bear the economic risk
of the investment for an indefinite period of time since the securities cannot be sold, transferred or assigned to any person or
entity without compliance with the provisions of the Securities Act
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Dated: _____________, 20___.
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By:
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Name:
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Print:
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Note: Signature must correspond with the name as written upon the face of the Warrant in all respects, without alteration or enlargement or any change whatsoever.
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Exhibit 10.1
Agreement
No. 20-00223
[Pursuant
to Item 601(b)(10) of Regulation S-K, certain confidential portions of this exhibit have been omitted by means of marking
such portions with asterisks. The identified confidential portions (i) are not material and (ii) would be competitively
harmful if publicly disclosed.]
AMENDED
AND RESTATED
EXCLUSIVE
START-UP COMPANY LICENSE AGREEMENT
This
Amended and Restated Exclusive Start-Up Company License Agreement (this “Agreement”) is made effective the 21st day
of January, 2020 (the “Effective Date”) by and between the Wisconsin Alumni
Research Foundation, a nonstock, nonprofit Wisconsin corporation (“WARF”), and NeuroOne
Medical Technologies Corporation, a Delaware corporation (“Licensee”).
WHEREAS,
WARF owns certain intellectual property rights to the inventions described in the “Licensed Patents” defined below,
and WARF is willing to grant a license to Licensee under any one or all of the Licensed Patents, and Licensee desires a license
under all of them;
WHEREAS,
WARF and NeuroOne, LLC, a Minnesota limited liability company (the “Initial Licensee”) entered into an Exclusive Start-Up
Company License Agreement (Agreement No. 14-00333) made effective October 1, 2014, which was amended on February 22, 2017 (Agreement
No. 14-00333A), and further amended on March 30, 2019 (Agreement No. 14-00333B) and on September 18, 2019 (Agreement No. 14-00333C)
(collectively, the “Original Agreement”);
WHEREAS,
on October 27, 2016, the Initial Licensee merged with and into NeuroOne, Inc. a Delaware corporation (the “Successor Licensee”)
with the Successor Licensee continuing as the surviving entity and successor to the Initial Licensee under the Original Agreement,
with WARF consenting in Agreement No. 14-00333A for Initial Licensee to irrevocably transfer and assign to Successor Licensee
all of Initial Licensee’s right, title and interest in and to the Original Agreement;
WHEREAS,
on December 30, 2019, the Successor Licensee merged with and into Licensee, with Licensee as the surviving entity and successor
to the Successor Licensee under the Original Agreement; and
WHEREAS,
WARF and Licensee wish to amend and restate the Original Agreement in its entirety on the terms and conditions set forth herein.
NOW,
THEREFORE, in consideration of the mutual covenants and agreements set forth below, the parties covenant and agree as follows:
Section
1. Definitions.
For
the purpose of this Agreement, the Appendix A definitions shall apply which are incorporated herein by reference.
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Amended and Restated Exclusive Start-Up License - 20-00223
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Page 1 of 17
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Section
2. Grant.
A. License.
WARF
hereby grants to Licensee under the Licensed Patents an exclusive license to make, use and sell Products in the Licensed Field
and Licensed Territory. WARF hereby consents to the assignments resulting from the merger of Successor Licensee with and into
Licensee, with Licensee as the surviving entity, and acknowledges and agrees that Licensee is the “Licensee” for all
purpose of this Agreement and the Original Agreement. Licensee hereby accepts the transfer and assignment resulting from the merger
of the Successor Licensee with and into Licensee, fully assumes all rights, obligations, liabilities, and responsibilities under
this Agreement and the Original Agreement as if it were the “Licensee” under either, and agrees to be responsible
in full for the covenants, representations, warranties, terms, liabilities, and obligations of the Initial Licensee and Successor
Licensee under this Agreement and the Original Agreement.
B. Sublicenses.
Licensee
may grant written, nonexclusive sublicenses, without the right to further sublicense, to third parties. Any agreement granting
a sublicense shall contain terms and conditions no less restrictive than those set forth in this Agreement and shall state that
the sublicense is subject to the termination of this Agreement. Licensee shall have the same responsibility for the activities
of any sublicensee as if the activities were directly those of Licensee. Licensee shall provide WARF with the name, contact information
and address of each sublicensee, as well as information regarding the number of full-time employees of any such sublicensee to
allow WARF to determine whether it can maintain its small entity filing status for patent prosecution and maintenance purposes.
Upon WARF’s written request, Licensee shall provide to WARF copies of each sublicense agreement and any amendments thereto.
C. Reservation
of Rights.
In
addition to the United States Government Rights identified in Section 14, WARF hereby reserves the right to grant non-profit research
institutions and governmental agencies non-exclusive licenses to practice and use the inventions of the Licensed Patents for Non-Commercial
Research Purposes. WARF, the University of Wisconsin and the inventors of the Licensed Patents shall have the right to publish
any information included in the Licensed Patents.
D. License
to WARF.
(i) Licensee
hereby grants, and shall require its sublicensee(s) to grant, to WARF a nonexclusive, royalty-free, irrevocable, paid-up license,
with the right to grant sublicenses to non-profit research institutions and governmental agencies, to practice and use “Improvements”
for Non-Commercial Research Purposes. “Improvements” shall mean any patented modification of an invention described
in the Licensed Patents that (1) would be infringed by the practice of an invention claimed in the Licensed Patents; or (2) if
not for the license granted under this Agreement, would infringe one or more claims of the Licensed Patents.
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Amended and Restated Exclusive Start-Up License - 20-00223
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Page 2 of 17
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(ii) In
the event that Licensee and its sublicensee(s) discontinue the use or commercialization of the Licensed Patents or any Improvements
provided for under this Agreement, Licensee shall grant, and shall require its sublicensee(s) to grant to WARF an option to obtain
a nonexclusive, royalty-bearing license, with the right to grant sublicenses, to practice and use said Improvements for commercial
purposes. Licensee shall provide to WARF written notice that Licensee and its sublicensee(s) intend to discontinue such use or
commercialization immediately upon making such a decision. WARF’s option with respect to each Improvement shall expire sixty
(60) days after WARF’s receipt of said written notice from Licensee. The failure of WARF to timely exercise its option under
this paragraph shall be deemed a waiver of WARF’s option, but only with respect to the Improvement so disclosed.
Section
3. Development.
A. Licensee
shall use commercially reasonable efforts to diligently develop, manufacture, market and sell Products in each Licensed Field
and Licensed Territory throughout the term of this Agreement.
B. Beginning
in calendar year 2017 and until the Date of First Commercial Sale, Licensee shall provide WARF with a written Development Report
(as defined in Appendix D) summarizing Licensee’s development activities since the last Development Report and any necessary
adjustments to the Licensee’s development plan. Licensee agrees to provide each Development Report to WARF on or before
thirty (30) days from the end of each semi-annual period ending June 30 and December 31 for which a report is due, and shall set
forth in each Development Report sufficient detail to enable WARF to ascertain Licensee’s progress toward the Licensee’s
development of the Products. WARF reserves the right to audit Licensee’s records relating to the development activities
required hereunder. Such record keeping and audit procedures shall be subject to the procedures and restrictions set forth in
Section 6 for auditing the financial records of Licensee.
C. Licensee
agrees to and warrants that it has, or will obtain, the expertise necessary to independently evaluate the inventions of the Licensed
Patents and to develop Products for sale in the commercial market and that it so intends to develop Products for the commercial
market.
Section
4. Consideration.
A. License
Fee. In the Original Agreement, Licensee agreed to pay to WARF a one-time license fee of $[*] (the “License Fee”)
upon the earliest of (i) the date as of which Licensee raises a cumulative total of at least $3 million in financing, (ii) closing
date of a Change in Control of Licensee; or (iii) the date as of which Licensee's cumulative revenue reaches or exceeds $2 million.
WARF acknowledges WARF’s receipt of Licensee’s payment of the License Fee prior to the Effective Date of this Agreement.
B. Royalty.
(i) In
addition to the license fee under Section 4A, Licensee agrees to pay to WARF as “earned royalties” a royalty calculated
as a percentage of the Net Sales derived from the sale, transfer and/or lease of Products in accordance with the terms and conditions
of this Agreement. The royalty shall remain fixed while this Agreement is in effect at a rate of [*]% of such Net Sales and will
be deemed earned as of the date such Net Sales are received and paid on a quarterly basis as set forth in Section 4F.
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(ii) If
Licensee is required to pay royalties to one or more independent third parties during any calendar year to obtain a license or
similar right in the absence of which Licensee could not legally make, use or sell Products, then the royalty payable hereunder
will be reduced by [*]% for each additional [*]% of royalties payable for all of the additional licensing components, to WARF.
Notwithstanding the foregoing, in no event shall the royalty due WARF be reduced to less than [*]%.
C. Sublicensing
Royalties and Fees.
(i) With
respect to sublicenses granted by Licensee under Section 2B, Licensee shall pay to WARF an amount equal to what Licensee would
have been required to pay to WARF had Licensee sold the amount of Products sold by such sublicensee.
(ii) In
addition, if Licensee receives any fees, minimum royalties, or other payments in consideration for any rights granted under a
sublicense, or option to sublicense, or other similar rights, and such payments are not based directly upon the amount or value
of Products sold by the sublicensee (hereinafter “Sublicense Fees”), then Licensee shall pay WARF [*]% of such Sublicense
Fees within thirty (30) days of Licensee’s receipt of such Sublicense Fees, and otherwise in the manner specified in Section
4F. Licensee shall not receive from its sublicensees anything of value in lieu of cash payments in consideration for any sublicense
granted under this Agreement without the express prior written consent of WARF. No payments owed for Sublicense Fees shall be
prorated, whether the sublicense to the Licensed Patents is bundled with other licenses or sublicenses or not, without WARF’s
written consent.
D. Minimum
Royalty.
Licensee
further agrees to pay to WARF a minimum royalty of $50,000 for calendar year 2020, $100,000 for calendar year 2021, and $150,000
for calendar year 2022 and each calendar year thereafter or part thereof during which this Agreement is in effect, against which
any earned royalty paid for the same calendar year will be credited. The minimum royalty for a given year shall be due at the
time payments are due for the calendar quarter ending on December 31. It is understood that the minimum royalties will apply on
a calendar year basis, and that Net Sales of Products requiring the payment of earned royalties made during a prior or subsequent
calendar year shall have no effect on the annual minimum royalty due to WARF for any other given calendar year.
E. Patent
Fees and Costs.
(i) In
the Original Agreement, Licensee agreed to reimburse WARF $[*] (the “Patent Fee”) towards the costs incurred by WARF
in filing, prosecuting and maintaining the Licensed Patents. Such payment is due the earliest of (i) the date as of which Licensee
raises a cumulative total of at least $5 million in financing; (ii) a Change in Control (as defined below) of Licensee; or (iii)
the date as of which Licensee's cumulative revenue reaches or exceeds $2 million. WARF acknowledges WARF’s receipt of Licensee’s
payment of the Patent Fee prior to the Effective Date of this Agreement.
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(ii) If
WARF decides to abandon maintenance of any patent under the Licensed Patents, WARF shall provide Licensee notice of WARF’s
intent to abandon such application and the parties will determine in good faith how to proceed, taking into account the patent
fees and costs already expended.
F. Accounting
Payments.
(i) Amounts
owing to WARF under Section 4B and Section 4C shall be paid on a quarterly basis, with such amounts due and received by WARF on
or before the thirtieth (30th) day following the end of the calendar quarter ending on March 31, June 30, September 30 or December
31 in which such amounts were earned. The balance of any royalty and non-royalty amounts owed to WARF under this Agreement which
remain unpaid more than thirty (30) days after they are due to WARF shall accrue interest until paid at the rate of the lesser
of one percent (1%) per month or the maximum amount allowed under applicable law. However, in no event shall this interest provision
be construed as a grant of permission for any payment delays.
(ii) Except
as otherwise directed, all amounts owing to WARF under this Agreement shall be paid in U.S. dollars to WARF at the address provided
in Section 16(a). All royalties owing with respect to Net Sales and other fees stated in currencies other than U.S. dollars shall
be converted at the rate shown in the Federal Reserve Noon Valuation Value of Foreign Currencies on the day preceding the payment.
WARF is exempt from paying income taxes under U.S. law. Therefore, all payments due under this Agreement shall be made without
deduction for taxes, assessments, or other charges of any kind which may be imposed on WARF by any government outside of the United
States or any political subdivision of such government with respect to any amounts payable to WARF pursuant to this Agreement.
All such taxes, assessments, or other charges shall be assumed by Licensee or its sublicensee(s).
(iii) A
full accounting showing how any amounts owing to WARF under Section 4B and Section 4C have been calculated shall be submitted
to WARF on the date of each such payment. For royalties, such accounting shall be on a per country and product line, model or
tradename basis and shall be summarized on the form shown in Appendix C attached to this Agreement. Such accounting shall include
completing the quarterly royalty forecast section of Appendix C. In the event no payment is owed to WARF, a statement setting
forth that fact shall be supplied to WARF.
Section
5. Certain Warranties.
A. WARF
warrants that except as otherwise provided under Section 14 of this Agreement with respect to U.S. Government interests, it is
the owner of the Licensed Patents or otherwise has the right to grant the licenses granted to Licensee in this Agreement. However,
nothing in this Agreement shall be construed as:
(i) a
warranty or representation by WARF as to the validity or scope of any of the Licensed Patents;
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(ii) a
warranty or representation that anything made, used, sold or otherwise disposed of under the license granted in this Agreement
will or will not infringe patents of third parties; or
(iii) an
obligation to furnish any know-how not provided in the Licensed Patents or any services other than those specified in this Agreement.
B. WARF
MAKES NO REPRESENTATIONS, EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, AND ASSUMES NO RESPONSIBILITIES WHATSOEVER
WITH RESPECT TO THE USE, SALE, OR OTHER DISPOSITION BY LICENSEE, ITS SUBLICENSEE(S) OR THEIR VENDEES OR OTHER TRANSFEREES OF PRODUCTS
INCORPORATING OR MADE BY USE OF INVENTIONS LICENSED UNDER THIS AGREEMENT.
C. Licensee
represents and warrants that Products produced under the license granted herein shall be manufactured substantially in the United
States as required by 35 U.S.0 § 204 and applicable regulations of Chapter 37 of the Code of Federal Regulations.
Section
6. Recordkeeping.
A. Licensee
and its sublicensee(s) shall keep books and records sufficient to verify the accuracy and completeness of Licensee’s and
its sublicensee(s)’s accounting referred to above, including without limitation inventory, purchase and invoice records
relating to the Products or their manufacture. In addition, Licensee shall maintain documentation evidencing that Licensee is
in fact pursuing the development of Products as required herein. Such documentation may include, but is not limited to, invoices
for studies advancing the development of Products, laboratory notebooks, internal job cost records, and filings made to the Internal
Revenue Department to obtain tax credit, if available, for research and development of Products. Such books and records shall
be preserved for a period not less than six (6) years after they are created during and after the term of this Agreement.
B. Licensee
and its sublicensee(s) shall take all steps necessary so that WARF may within thirty (30) days of its request review and copy
all the books and records at a single U.S. location to allow WARF to verify the accuracy of Licensee’s royalty reports and
Development Reports, the royalty reports of its sublicensee(s), and any applicable Sublicense Fees. Such review may be performed
by any employee of WARF as well as by any attorney or registered CPA designated by WARF, upon reasonable notice and during regular
business hours.
C. If
a royalty payment deficiency is determined, Licensee and its sublicensee(s), as applicable, shall pay the royalty deficiency outstanding
within thirty (30) days of receiving written notice thereof, plus interest on outstanding amounts as described in Section 4F(i).
D. If
a royalty payment deficiency for a calendar year exceeds the lesser of [*]% of the royalties paid for that year or $[*], then
Licensee or its sublicensee(s) shall be responsible for paying WARF’s out-of-pocket expenses incurred with respect to such
review.
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Section
7. Term and Termination.
A. The
term of this Agreement shall begin on the Effective Date and continue until this Agreement is terminated as provided herein or
until the earlier of the date that no Valid Claims of any Licensed Patent remain or the payment of earned royalties under Section
4B and Section 4C, once begun, ceases for more than four (4) calendar quarters.
B. Licensee
may terminate this Agreement at any time by giving at least ninety (90) days’ written and unambiguous notice of such termination
to WARF. Such a notice shall be accompanied by a statement of the reasons for termination.
C. If
Licensee at any time defaults in the timely payment of any monies due to WARF or the timely submission to WARF of any Development
Report or commits any breach of any other covenant herein contained, and Licensee fails to remedy any such breach or default within
ninety (90) days after written notice thereof by WARF, or if Licensee commits any act of bankruptcy, becomes insolvent, is unable
to pay its debts as they become due, files a petition under any bankruptcy or insolvency act, or has any such petition filed against
it which is not dismissed within sixty (60) days, or if Licensee or its sublicensee(s) offer any component of the Licensed Patents
to their creditors, WARF may, at its option, terminate this Agreement immediately by giving notice of termination to Licensee.
D. WARF
may terminate this Agreement by giving Licensee at least ninety (90) days’ written notice if the Date of First Commercial
Sale does not occur by June 30, 2020.
E. Upon
the termination of this Agreement, Licensee and its sublicensee(s) shall remain obligated to provide an accounting for and to
pay royalties earned up to the date of the termination and any minimum royalties shall be prorated as of the date of termination
by the number of days elapsed in the applicable calendar year. Licensee and its sublicensee(s) shall also remain obligated to
pay all other amounts owed under this Agreement to WARF prior to termination. Such accountings and payments shall be due within
thirty (30) days of termination.
F. Waiver
by either party of a single breach or default, or a succession of breaches or defaults, shall not deprive such party of any right
to terminate this Agreement in the event of any subsequent breach or default.
Section
8. Assignability.
This
Agreement may not be transferred or assigned by Licensee, without the prior written consent of WARF, expect that Licensee may
assign this Agreement in the event of a Change in Control of Licensee. As used herein, “Change in Control” means (i)
the sale or disposition of all or substantially all the assets of Licensee or its direct or indirect parent corporation; (ii)
the reorganization, merger, consolidation, or similar transaction involving Licensee or its direct or indirect parent corporation
which results in the voting securities of such entity outstanding immediately prior to that transaction ceasing to represent at
least 50% of the combined voting power of the surviving entity immediately after such transaction; (iii) the acquisition in one
or more transactions by any “person”, as that term is used in Sections 13(d) and 14(d) of the Securities Exchange
Act of 1934, as amended (the “Exchange Act”), together with any of such person's “affiliates” or “associates”,
as such terms are used in the Exchange Act, of 40% or more of the outstanding shares of the voting capital stock of Licensee or
its direct or indirect parent corporation (excluding any employee benefit plan or related trust sponsored or maintained by that
entity); or (iv) any event or series of events in which the individuals who are the directors of Licensee or its direct or indirect
parent corporation as of the effective date of this Agreement (“Incumbent Directors”) cease for any reason to constitute
at least fifty percent (50%) of the board of directors of that entity; provided, however, that if any new director
is approved by a vote of at least fifty percent (50%) of the Incumbent Directors, such new director shall be considered an Incumbent
Director. Any attempted transfer or assignment in contravention of the foregoing shall be void.
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Section
9. Contest of Validity.
A. Licensee
and its sublicensee(s) must provide WARF at least three (3) months prior written notice before filing any action that contests
the validity of any Licensed Patent during the term of this Agreement.
B. In
the event Licensee or its sublicensee(s) files any action contesting the validity of any Licensed Patent, the filing party shall
pay a royalty rate of two (2) times the royalty rate specified in Section 4B of this Agreement for all Products sold during the
pendency of such action. Moreover, should the outcome of such contest determine that any claim of a Licensed Patent challenged
is valid and would be infringed by a Product sold by Licensee (or its sublicensee(s) if such sublicensee filed the action), if
not for the license granted by this Agreement, Licensee (or its sublicensee(s), if such sublicensee filed the action) shall thereafter,
and for the remaining term of this Agreement, pay a royalty rate of three (3) times the royalty rate specified in Section 4B of
this Agreement.
C. In
the event that Licensee or its sublicensee(s) contests the validity of any Licensed Patent during the term of this Agreement,
Licensee agrees (and shall require its sublicensee(s) to agree) to pay to WARF all royalties due under the Agreement during the
period of challenge. For the sake of clarity, such amounts shall not be paid into any escrow or other account, but directly to
WARF, and shall not be refunded.
Section
10. Enforcement.
WARF
intends to protect the Licensed Patents against infringers or otherwise act to eliminate infringement, when, in WARF’s sole
judgment, such action may be necessary, proper, and justified and makes reasonable business sense considering all factors. In
the event that Licensee or its sublicensee(s) believe there is infringement of any Licensed Patent under this Agreement which
is to its substantial detriment, Licensee shall provide WARF with notification and reasonable evidence of such infringement. Upon
request by WARF, Licensee will provide WARF with such assistance and information as may be useful to WARF in connection with WARF’s
taking such action (if the cause of action arose during the term of this Agreement and WARF reimburses Licensee for Licensee’s
reasonable out-of-pocket expenses).
Section
11. Patent Marking.
Licensee
and its sublicensee(s) shall mark all Products or Product packaging with the appropriate patent number reference in compliance
with the requirements of U.S. law 35 U.S.C. § 287.
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Section
12. Product Liability: Conduct of Business.
A. Licensee
shall, at all times during the term of this Agreement and thereafter, indemnify, defend and hold WARF and the inventors of the
Licensed Patents harmless against all claims and expenses, including legal expenses and reasonable attorneys fees, arising out
of the death of or injury to any person or persons or out of any damage to property and against any other claim, proceeding, demand,
expense and liability of any kind whatsoever resulting from the production, manufacture, sale, use, lease, consumption or advertisement
of Products arising from any right or obligation of Licensee or its sublicensee(s) hereunder. WARF at all times reserves the right
to select and retain counsel of its own to defend WARF’s interests.
B. Licensee
warrants that it now maintains and will continue to maintain liability insurance coverage appropriate to the risk involved in
marketing the Products subject to this Agreement and that such insurance coverage lists WARF and the inventors of the Licensed
Patents as additional insureds. Upon WARF’s request, Licensee will present evidence to WARF that such coverage is being
maintained.
Section
13. Use of Names.
Neither
Licensee nor its sublicensee(s) shall use WARF’s name, the name of any inventor of inventions governed by this Agreement,
or the name of the University of Wisconsin in sales promotion, advertising, or any other form of publicity without the prior written
approval of the entity or person whose name is being used.
Section
14. United States Government Interests.
It
is understood that if the United States Government (through any of its agencies or otherwise) has funded research, during the
course of or under which any of the inventions of the Licensed Patents were conceived or made, the United States Government is
entitled, as a right, under the provisions of 35 U.S.C. §§ 200-212 and applicable regulations of Chapter 37 of the Code
of Federal Regulations, to a nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced the invention
of such Licensed Patents for governmental purposes. Any license granted under this Agreement to Licensee or any of its sublicensees
shall be subject to such right.
Section
15. Miscellaneous.
This
Agreement shall be governed by and construed in all respects in accordance with the laws of the State of Wisconsin. If any provisions
of this Agreement are or shall come into conflict with the laws or regulations of any jurisdiction or any governmental entity
having jurisdiction over the parties or this Agreement, those provisions shall be deemed automatically deleted, if such deletion
is allowed by relevant law, and the remaining terms and conditions of this Agreement shall remain in full force and effect. If
such a deletion is not so allowed or if such a deletion leaves terms thereby made clearly illogical or inappropriate in effect,
the parties agree to substitute new terms as similar in effect to the present terms of this Agreement as may be allowed under
the applicable laws and regulations. The parties hereto are independent contractors and not joint venturers or partners.
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Section
16. Notices.
Any
notice required to be given pursuant to the provisions of this Agreement shall be in writing and shall be deemed to have been
given at the earlier of the time when actually received as a consequence of any effective method of delivery, including but not
limited to hand delivery or electronic transmission, i.e., email, transmission by telecopier, or delivery by a professional courier
service or the time when sent by certified or registered mail addressed to the party for whom intended at the address below or
at such changed address as the party shall have specified by written notice, provided that any notice of change of address shall
be effective only upon actual receipt.
|
|
(a)
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Wisconsin
Alumni Research Foundation
|
Attn:
Contract Manager
614
Walnut Street, 13th Fl.
Madison,
Wisconsin 53726
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(b)
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NeuroOne
Medical Technologies Corporation
|
Attn:
CEO and President
7599
Anagram Drive
Eden
Prairie, Minnesota 55344
Section
17. Integration.
This
Agreement constitutes the full understanding between the parties with reference to the subject matter hereof, and no statements
or agreements by or between the parties, whether orally or in writing, except as provided for elsewhere in this Section 17, made
prior to or at the signing hereof, shall vary or modify the written terms of this Agreement. Neither party shall claim any amendment,
modification, or release from any provisions of this Agreement by mutual agreement, acknowledgment, or otherwise, unless such
mutual agreement is in writing, signed by the other party, and specifically states that it is an amendment to this Agreement.
The parties acknowledge and agree that, as of the Effective Date, this Agreement shall supersede the Original Agreement, which
is terminated in its entirety and replaced with the terms and conditions set forth in this Agreement.
Section
18. Confidentiality.
The
parties hereto agree to keep any information identified as confidential by the disclosing party, confidential using methods at
least as stringent as each party uses to protect its own confidential information. “Confidential Information” shall
include the terms of this Agreement, Licensee’s development plan and Development Reports, Royalty Reports and forecasts,
sublicenses, the Licensed Patents and all information concerning them and any other information marked confidential or accompanied
by correspondence indicating such information is exchanged in confidence between the parties. Except as may be authorized in advance
in writing by WARF, Licensee shall only grant access to WARF’s Confidential Information to its sublicensee(s) and those
employees of Licensee and its sublicensee(s) involved in research relating to the Licensed Patents. Licensee shall require its
sublicensee(s) and all such employees to be bound by terms of confidentiality no less restrictive than those set forth in this
Section 18. Licensee and its sublicensee(s) shall not use any Confidential Information to WARF’s detriment, including, but
not limited to, claiming priority to the Licensed Patents in any patent prosecution. The confidentiality and use obligations set
forth above apply to all or any part of the Confidential Information disclosed hereunder except to the extent that:
(i) the
receiving party can show by written record that it possessed the information prior to its receipt from the disclosing party;
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(ii) the
information was already available to the public or became so through no fault of the receiving party;
(iii) the
information is subsequently disclosed to the receiving party by a third party that has the right to disclose it free of any obligations
of confidentiality;
(iv) the
information is required by law, rule, regulation or judicial process to be disclosed (if such requirement arises, the party requested
to disclose the Confidential Information of the other party shall, prior to any such disclosure, promptly notify said party and
provide assistance in any reasonable effort to obtain confidential treatment with respect to such disclosure);
(v) the
information is reasonably required for regulatory filings for the Products that Licensee has a license or right to develop or
commercialize hereunder in a given country or region;
(vi) the
information is reasonably necessary to be disclosed to a Licensee’s affiliates’ employees, consultants, contractors,
and agents, to its licensees and sublicensees, in each case on a need-to-know basis in connection with the development or commercialization
of the Products in accordance with the terms of this Agreement, in each case under written obligations of confidentiality and
non-use at least as stringent as those herein;
(vii) the
information is reasonably necessary to be disclosed to actual and bona fide potential investors, acquirors, licensees, and other
financial or commercial partners solely for the purpose of evaluating or carrying out an actual or potential investment, acquisition,
or collaboration, in each case under written obligations of confidentiality and non-use at least as stringent (except with respect
to duration, which may be shorter as long as not less than three (3) years) as those herein; or
(viii) five
(5) years have elapsed from the expiration of this Agreement.
Section
19. Publicity.
A. Except
as required by applicable law (including, disclosure requirements of the U.S. Securities and Exchange Commission (“SEC”),
the NASDAQ stock exchange or any other stock exchange on which securities issued by Licensee or its affiliates are traded), neither
WARF nor Licensee shall make any other public announcement concerning this Agreement or the subject matter hereof without the
prior written consent of the other party. In the event of a required public announcement, to the extent practicable under the
circumstances, the party making such announcement shall provide the other party with a copy of the proposed text of such announcement
sufficiently in advance of the scheduled release to afford such other party a reasonable opportunity to review and comment upon
the proposed text in addition to approving the public announcement; provided, however, that the party making such announcement
shall make every effort not to disclose any of the other party’s Confidential Information.
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B. Licensee
be permitted to file this Agreement (with the redaction of certain provisions of this Agreement) with the SEC, the NASDAQ stock
exchange or any other stock exchange or governmental agency on which securities issued by Licensee or its affiliate are traded,
and Licensee shall use commercially reasonable efforts to seek confidential treatment for the terms proposed to be redacted; provided,
however, that Licensee shall ultimately retain control over what information it must disclose to the SEC, the NASDAQ stock exchange
or any other stock exchange or governmental agency, as the case may be.
Section
20. Authority.
The
persons signing on behalf of WARF and Licensee hereby warrant and represent that they have authority to execute this Agreement
on behalf of the party for whom they have signed. This Agreement may be executed in one or more counterparts by the parties by
signature of a person having authority to bind the party, each of which when executed and delivered by facsimile, electronic transmission,
or by mail delivery, will be an original and all of which will constitute but one and the same Agreement. The parties agree this
Agreement may be electronically signed and that the electronic signatures appearing on this Agreement are the same as handwritten
signatures for the purposes of validity, enforceability and admissibility. No agreement between the parties will exist unless
the duly authorized representatives of Licensee and WARF have signed this document within sixty (60) days of the Effective Date
written on the first page of this Agreement.
IN
WITNESS WHEREOF, the parties hereto have duly executed this Agreement on the dates indicated below.
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Wisconsin Alumni Research Foundation
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By:
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/s/ Michael Falk
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Date:1/21/2020
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Michael Falk, Chief Intellectual Property & Licensing Officer
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NeuroOne Medical Technologies Corporation
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By:
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/s/ Dave Rosa
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Date:1/21/2020
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Dave Rosa, CEO and President
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APPENDIX
A
A. “Date
of First Commercial Sale” shall mean the date when Licensee sells an FDA approved Product to the retail market.
B. “Development
Report” shall mean a written account of Licensee’s progress of the development of the Products, having at least the
information specified on Appendix D to this Agreement.
C. “Licensed
Field” shall be limited to devices for the treatment and diagnosis of neurological disorders.
D. “Licensed
Patents” shall refer to and mean those patents listed on Appendix B attached hereto.
E. “Licensed
Territory” shall be limited to the United States.
F. “Net
Sales” shall mean the gross revenue received by Licensee and by its sublicensees, as applicable, from the sale or other
disposition of Products covered by a Valid Claim made, sold, leased, transferred and/or imported in the Licensed Territory, less
the following items, but only insofar as these items are commercially reasonable under the circumstances, documented in writing,
pertain specifically to the sale of the Product, were actually included and accounted for in the gross revenue, and were not given
in exchange for anything of value (such as data, in-kind exchanges, or commitments to purchase other products or services): (a)
use, excise, sales and other applicable taxes; (b) credits for returns and rejections; (c) allowances for bad debt and uncollectible
accounts (provided that Licensee has undertaken commercially reasonable efforts to obtain each such debt and amount); (d) customary
and commercially reasonable quantity and cash discounts or rebates actually allowed, taken or paid; (e) governmental and managed
care rebates, and hospital or other buying group charge backs; and (f) costs of insurance and outbound transportation (prepaid
or allowed) of the Products from the place of manufacture to the customer’s location. Licensee and its sublicensees will
not receive any non-monetary consideration in exchange for the transfer, lease or sale of a Product. For clarity, the foregoing
deductions applicable to a given Product shall not exceed an aggregate maximum of twenty percent (20%) of the invoiced price for
such Product, unless Licensee requests and WARF provides prior written consent to deduct a larger percentage in view of the facts
of the particular circumstances, which request WARF will consider in good faith and will not unreasonably withhold its consent.
Products
that are transferred to third parties without charge (“Free Products”) shall be accounted for in the calculation of
Net Sales by using the average invoice price to the end user of that type of Product during the applicable calendar quarter, unless
Licensee requests and WARF provides prior written consent to calculate the amount owed for such Products in a different manner,
which request WARF will consider in good faith and will not unreasonably withhold its consent; provided, however, Licensee may
withhold such Free Products from the calculation of Net Sales to the extent such dispositions constitute less than ten percent
(10%) of Products, excluding Free Products, that were transferred during the applicable calendar quarter, and after which threshold
is met such Free Products shall be included in the calculation of Net Sales as stated above.
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G. “Non-Commercial
Research Purposes” shall mean the use of the inventions of the Licensed Patents and/or Improvements for academic research
purposes or other not-for-profit or scholarly purposes not involving the use of the inventions of the Licensed Patents or Improvements
to perform services for a fee or for the production or manufacture of products for sale to third parties.
H. “Products”
shall refer to and mean any and all products that employ or are in any way produced by the practice of an invention claimed in
the Licensed Patents or that would otherwise constitute infringement of any of the Licensed Patents
I. “Valid
Claim” means (i) any claim of an issued and unexpired patent within the Licensed Patents which has not been held unenforceable
or invalid by a court or other governmental agency of competent jurisdiction in an unappealed or unappealable decision, and (ii)
any pending claim in a pending patent application within the Licensed Patents.
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APPENDIX
B
LICENSED PATENTS
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REFERENCE
NUMBER
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COUNTRY
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APPLICATION
SERIAL NUMBER
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FILING
DATE
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PATENT
NUMBER
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[*]
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[*]
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[*]
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[*]
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[*]
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[*]
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THIN-FILM
MICRO ELECTRODE ARRAY AND METHOD (Ahmed, Kim, Niemann, Sillay, Williams)
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Amended and Restated Exclusive Start-Up License - 20-00223
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Page 15 of 17
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APPENDIX
C
WARF ROYALTY REPORT
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Licensee: ________________________________
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Agreement No:_______________________
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Inventor: ________________________________
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P#: ________________________________
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Period Covered: From:_______________________
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Through: ___________________________
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Prepared By:______________________________
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Date: ______________________________
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Approved By:_____________________________
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Date: ______________________________
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If license
covers several major product lines, please prepare a separate report for each line. Then combine all product lines into a summary
report.
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Report Type:
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Single Product Line Report:________________________________________________
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Multiproduct Summary Report. Page 1 of
_______Pages
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Product Line Detail. Line: ___________ Tradename:
__________ Page__________
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Report
Currency: U. S. Dollars ________ Other _______________
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Country
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Gross
Sales
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*
Less: Allowances
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Net
Sales
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Royalty
Rate
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Period
Royalty Amount
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This
Year
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Last
Year
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TOTAL:
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Total
Royalty: _____________Conversion Rate: __________ Royalty in U.S. Dollars: $______
The
following royalty forecast is non-binding and for WARF’s internal planning purposes only:
Royalty
Forecast Under This Agreement: Next Quarter: _____ Q2: ______ Q3: ____ Q4: ____
*
On a separate page, please indicate the reasons for returns or other adjustments if significant.
Also
note any unusual occurrences that affected royalty amounts during this period.
To
assist WARF’s forecasting, please comment on any significant expected trends in sales volume.
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Amended and Restated Exclusive Start-Up License - 20-00223
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Page 16 of 17
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APPENDIX
D
DEVELOPMENT REPORT
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A.
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Date
development plan initiated and time period covered by this report.
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B.
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Development
Report (4-8 paragraphs).
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1.
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Activities
completed since last report including the object and parameters of the development, when
initiated, when completed and the results.
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2.
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Activities
currently under investigation, i.e., ongoing activities including object and parameters
of such activities, when initiated, and projected date of completion.
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C.
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Future
Development Activities (4-8 paragraphs).
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1.
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Activities
to be undertaken before next report including, but not limited to, the type and object
of any studies conducted and their projected starting and completion dates.
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2.
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Estimated
total development time remaining before a product will be commercialized.
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D.
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Items
to be provided if applicable:
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1.
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Information
relating to Product that has become publicly available, e.g., published articles, competing
products, patents, etc.
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2.
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Development
work being performed by third parties other than Licensee to include name of third party,
reasons for use of third party, planned future uses of third parties including reasons
why and type of work.
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3.
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Update
of competitive information trends in industry, government compliance (if applicable)
and market plan.
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PLEASE
SEND DEVELOPMENT REPORTS TO:
Wisconsin
Alumni Research Foundation
Attn.:
Contracts Manager
614
Walnut Street, 13th Floor
Madison,
WI 53726
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Amended and Restated Exclusive Start-Up License - 20-00223
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Page 17 of 17
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