CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS
([**]), HAS BEEN OMITTED AND FILED SEPARATELY WTH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED
EXCLUSIVE LICENSE AGREEMENT
AMONG
THE XXXXX XXXXXXX UNIVERSITY
&
ZHEJIANG UNIVERSITY
&
VIACELL, INC.
JHU REF. NO.: 4664
EXHIBIT 10.4
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (the "Agreement") is entered into by and among The
Xxxxx Xxxxxxx University, a Maryland corporation having an address at 0000 X.
Xxxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxx, 00000-0000 (hereinafter referred to as
"JHU"), Zhejiang University having an address at 000 Xxx Xxx Xxxx, Xxxxxxxx,
Xxxxxxxx 000000., P.R. China (hereinafter referred to as "INSTITUTION") (both
hereinafter collectively referred to as "LICENSORS"), and ViaCell, Inc., a
Delaware corporation, having an address at 000 Xxxxx Xxxxxx, 00xx Xxxxx,
Xxxxxxxxx, XX 00000 (hereinafter referred to as "COMPANY") (JHU, INSTITUTION,
and COMPANY are hereinafter collectively referred to as the "Parties"), with
respect to the following:
RECITALS
WHEREAS, as centers for research and education, JHU and INSTITUTION are
interested in licensing PATENT RIGHTS (hereinafter defined) in a manner that
will benefit the public by facilitating the distribution of useful products and
the utilization of new processes, but are without capacity to commercially
develop, manufacture, and distribute any such products or processes; and
WHEREAS, a valuable invention(s) entitled [**] was developed during the
course of research conducted by Xx. Xxx XxXxxxx, a faculty member at JHU, and
Xx. Xxxxx Xxxx, a faculty member at INSTITUTION (hereinafter collectively
referred to as "Inventors"); and
WHEREAS, LICENSORS have acquired through assignment all rights, title and
interest, with the exception of certain retained rights by the United States
Government, in their interest in said valuable inventions; and
WHEREAS, LICENSORS agreed that JHU will take the lead with respect to
commercializing said inventions in accordance with the terms of the
Interinstitutional Agreement between JHU and INSTITUTION effective as of May
16th, 2005; and
WHEREAS, COMPANY has informed LICENSORS, in accordance with the terms of
the Option Agreement effective as of May 16th, 2005, that it desires to acquire
certain rights in such inventions as herein provided, and to commercially
develop, manufacture, use and distribute products and processes based upon or
embodying said valuable inventions;
NOW THEREFORE, in consideration of the premises and the mutual promises and
covenants contained in this Agreement, and for other good and valuable
consideration, the receipt and sufficiency of which is hereby acknowledged, the
Parties hereto agree as follows:
-2-
EXHIBIT 10.4
ARTICLE 1
DEFINITIONS
All references to particular Exhibits, Articles or Paragraphs shall mean
the Exhibits to, and Paragraphs and Articles of, this Agreement, unless
otherwise specified. For the purposes of this Agreement and the Exhibits hereto,
the following words and phrases shall have the following meanings:
1.1 "AFFILIATED COMPANY" as used herein in either singular or plural shall
mean any corporation, company, partnership, joint venture or other entity, which
controls, is controlled by or is under common control with COMPANY. For purposes
of this Paragraph 1.1, control shall mean the direct or indirect ownership of at
least fifty- percent (50%) of the voting or economic interest in said entity.
1.2 "DEVELOPED PRODUCT(S)" as used herein in either singular or plural
shall mean any materials, compositions, drugs, other products, methods or
services which are in material part first identified, discovered or made by
practicing one or more VALID CLAIMS in the PATENT RIGHTS licensed hereunder.
DEVELOPED PRODUCT(S) shall include all resultant FDA and other regulatory agency
approved products identified by COMPANY which are in material part made or
discovered through the use of the PATENT RIGHTS delivered hereunder. DEVELOPED
PRODUCT(S) excludes LICENSED PRODUCT(S) and LICENSED SERVICE(S).
1.3 "DEVELOPED PRODUCT LICENSEE(S)" as used herein in either singular or
plural shall mean any person or entity other than AFFILIATED COMPANIE(S) to
which COMPANY has granted a license to DEVELOPED PRODUCT(S).
1.4 "EFFECTIVE DATE" of this License Agreement shall mean the date the last
Party hereto has executed this Agreement.
1.5 "EXCLUSIVE LICENSE" shall mean a grant by LICENSORS to COMPANY of their
entire right and interest in the PATENT RIGHTS subject to rights retained by the
United States Government, if any, in accordance with the Xxxx-Xxxx Act of 1980
(established by P.L. 96-517 and amended by P.L. 98-620, codified at 35 USC
Section 200 et. seq. and implemented according to 37 CFR Part 401), and subject
to the retained right of LICENSORS to make, have made, provide and use for their
and The Xxxxx Xxxxxxx Health Systems' non-commercial purposes PATENT RIGHTS,
LICENSED PRODUCT(S) and LICENSED SERVICE(S), including the ability to distribute
any biological material, including, but not limited to, material disclosed
and/or claimed in PATENT RIGHTS, for nonprofit academic research use to
non-commercial entities, as is customary in the scientific community.
1.6 "KNOW HOW" shall mean any unpatented technical information, research
data, designs, formulas, process information, clinical data and other
information which is owned by LICENSORS and directly related to PATENT RIGHTS
licensed hereunder and generated in the laboratories of Xx. Xxx XxXxxxx and Xx.
Xxxxx Xxxx prior to the EFFECTIVE DATE and which
-3-
EXHIBIT 10.4
LICENSORS have the right to license, necessary for the exercise or use of the
PATENT RIGHTS in the LICENSED FIELD.
1.7 "LICENSED FIELD" shall mean [**].
1.8 "LICENSED PRODUCT(S)" as used herein in either singular or plural shall
mean any process or method, material, compositions, drug, or other product, the
manufacture, use or sale of which would constitute, but for the license granted
to COMPANY pursuant to this Agreement, an infringement of a VALID CLAIM of
PATENT RIGHTS (infringement shall include, but is not limited to, direct,
contributory, or inducement to infringe).
1.9 "LICENSED SERVICE(S)" as used herein in either singular or plural shall
mean the performance on behalf of a third party of any method or service or the
manufacture of any product or the use of any product or composition which would
constitute, but for the license granted to COMPANY pursuant to this Agreement,
an infringement of a VALID CLAIM of the PATENT RIGHTS, (infringement shall
include, but not be limited to, direct, contributory or inducement to infringe).
1.10 "NET SALES" shall mean gross sales revenues and fees billed by
COMPANY, AFFILIATED COMPANY, SUBLICENSEE(S) and/or DEVELOPED PRODUCT LICENSEE(S)
from the sale or other disposition of LICENSED PRODUCT(S) or DEVELOPED
PRODUCT(S), less reasonable (and, in each every case, actually paid or applied)
trade discounts allowed, refunds, returns and recalls, and sales taxes directly
related to the sale or delivery of LICENSED PRODUCT(S) and/or DEVELOPED
PRODUCT(S).
In the event that COMPANY, AFFILIATED COMPANY, SUBLICENSEE(S) and/or
DEVELOPED PRODUCT LICENSEE(S) sells a LICENSED PRODUCT(S) and/or DEVELOPED
PRODUCT(S) in combination with other ingredients or substances which are not
LICENSED PRODUCTS, LICENSED SERVICE(S) or DEVELOPED PRODUCT(S) ("Other Items")
or as part of a kit that contains Other Items, the NET SALES shall mean the
amount billed by COMPANY, AFFILIATED COMPANY, SUBLICENSEE(S) and/or DEVELOPED
PRODUCT LICENSEE(S) on sales of the combination process or product less the
deductions set forth above, multiplied by a proration factor determined as
follows:
(a) If all LICENSED PRODUCT(S) or DEVELOPED PRODUCT(S) and Other Items were
sold separately during the same or immediately preceding year, the
proration factor shall be determined by the formula [A / (A+B)], where A is
the aggregate gross sales price of all LICENSED PRODUCT(S) and/or DEVELOPED
PRODUCT(S) components during such period when sold separately from the
Other Items, and B is the aggregate gross sales price of all Other Items
during such period when sold separately from the LICENSED PRODUCT(S) and/or
DEVELOPED PRODUCT(S) components; or
-4-
EXHIBIT 10.4
(b) If the combination includes Other Items which are not sold separately
(but all LICENSED PRODUCT(S) and/or DEVELOPED PRODUCT(S) in the combination
are available separately), the NET SALES for purposes of royalty payments
will be calculated by multiplying the NET SALES of the combination by A/C,
where A is defined above and C is the invoiced price of the combination.
(c) If all components of the combination process or product were not sold
separately during the same or immediately preceding year, the proration
factor shall be determined by the formula [C / (C+D)], where C is the value
of the LICENSED PRODUCT(S) and/or DEVELOPED PRODUCT(S) components and D is
the value of the Other Items, with such value being determined in good
faith by the parties.
The term "Other Items" does not include solvents, diluents, carriers,
excipients, buffers or the like used in formulating a product, or other
non-essential components required in a process or service.
1.11 "NET SERVICE REVENUES" shall mean gross service revenues and fees
billed by COMPANY, AFFILIATED COMPANY, SUBLICENSEE(S) and/or DEVELOPED PRODUCT
LICENSEE(S) for or in connection with the performance of LICENSED SERVICE(S)
and/or DEVELOPED PRODUCT(S) less reasonable and appropriate (and, in each every
case, actually paid or applied) trade discounts allowed, refunds, returns and
recalls, duties and sales and/or use taxes imposed upon and directly related to
the sale of or fee the LICENSED SERVICE(S) and/or DEVELOPED PRODUCT(S). In the
event that COMPANY, AFFILIATED COMPANY, SUBLICENSEE(S) and/or DEVELOPED PRODUCT
LICENSEE(S) sells a LICENSED SERVICE(S) and/or DEVELOPED PRODUCT(S) in
combination with Other Items or as part of a kit that contains Other Items, the
NET SERVICE REVENUES for purposes of royalty payments shall mean the amount
billed by COMPANY, AFFILIATED COMPANY, SUBLICENSEE(S) and/or DEVELOPED PRODUCT
LICENSEE(S) on sales of the combination process, service or product less the
deductions set forth above, multiplied by a proration factor determined as
follows:
(a) If all LICENSED SERVICE(S) and/or DEVELOPED PRODUCT(S) and Other Items
were sold separately during the same or immediately preceding year, the
proration factor shall be determined by the formula [A / (A+B)], where A is
the aggregate gross sales price of all LICENSED SERVICE(S) and/or DEVELOPED
PRODUCT(S) components during such period when sold separately from the
Other
-5-
EXHIBIT 10.4
Items, and B is the aggregate gross sales price of the Other Items during
such period when sold separately from the LICENSED SERVICE(S) and/or
DEVELOPED PRODUCT(S) components; or
(b)If the combination includes Other Items which are not sold separately
(but all LICENSED SERVICE(S) and/or DEVELOPED PRODUCT(S) in the combination
are available separately), the NET SERVICE REVENUES for purposes of royalty
payments will be calculated by multiplying the NET SERVICE REVENUE of the
combination by A/C, where A is defined above and C is the invoiced price of
the combination.
(c) If all components of the combination process, service or product were
not sold separately during the same or immediately preceding year, the
proration factor shall be determined by the formula [C / (C+D)], where C is
the value of the LICENSED SERVICE(S) and/or DEVELOPED PRODUCT(S) components
and D is the value of the Other Items, with such value being determined in
good faith by the parties.
1.12 "PATENT RIGHTS" shall mean [**].
1.13 "SUBLICENSEE(S)" as used herein in either singular or plural shall
mean any person or entity other than an AFFILIATED COMPANY to which COMPANY has
granted a sublicense under this Agreement.
1.14 "VALID CLAIM(S)" as used herein in either singular or plural shall
mean any unexpired issued claim or pending claim prosecuted in good faith of any
PATENT RIGHTS that has not been (i) finally rejected, (ii) declared invalid or
unenforceable by a patent office or court of competent jurisdiction in any
unappealed and unappealable decision or (iii) admitted to be invalid or
unenforceable through reissue or disclaimer or otherwise by the holder thereof.
ARTICLE 2
LICENSE GRANT
2.1 GRANT. Subject to the terms and conditions of this Agreement, LICENSORS
hereby grant to COMPANY (i) an EXCLUSIVE LICENSE to develop, make, have made,
use, import, offer for sale and sell the LICENSED PRODUCT(S) and DEVELOPED
PRODUCT(S), and to provide the LICENSED SERVICE(S) under the PATENT RIGHTS in
the LICENSED FIELD; and (ii) a non exclusive license to use KNOW HOW for
COMPANY'S internal research purposes only to develop and manufacture LICENSED
PRODUCT(S), LICENSEND SERVICE(S) and DEVELOPED PRODUCT(S) in the LICENSED FIELD.
These Grants shall apply to the COMPANY and any AFFILIATED COMPANY. If any
AFFILIATED COMPANY exercises rights under this Agreement, such AFFILIATED
COMPANY shall be bound by all terms and royalty payments, which shall apply to
the exercise of the rights, to the same extent as would apply
-6-
EXHIBIT 10.4
had this Agreement been directly between LICENSORS and the AFFILIATED COMPANY.
In addition, COMPANY shall remain fully liable to LICENSORS for all acts and
obligations of AFFILIATED COMPANY such that acts of the AFFILIATED COMPANY shall
be considered acts of the COMPANY.
2.2 SUBLICENSE. COMPANY may sublicense others under this Agreement, subject
to the terms and conditions of this Paragraph. As a condition to its validity
and enforceability, each sublicense agreement shall: (a) incorporate by
reference the terms and conditions of this Agreement, (b) be consistent with the
terms, conditions and limitations of this Agreement, (c) prohibit SUBLICENSEE'S
further sublicense of the rights delivered hereunder, (d) name LICENSORS as
intended third party beneficiaries of the obligations of SUBLICENSEE without
imposition of obligation or liability on the part of LICENSORS or their
Inventors to the SUBLICENSEE, (e) specifically incorporate Paragraphs 6.2
"Representations by LICENSORS", 7.1 "Indemnification", 10.1 "Use of Name", 10.4
"Product Liability" into the body of the sublicense agreement, and cause the
terms used therein to have the same meaning as in this Agreement. JHU shall have
the right to review all such sublicenses prior to execution for period of ten
(10) days (the "Review Period") of receipt of the sublicense from COMPANY to
confirm that the sublicense contains the provisions referenced above.
Notwithstanding the foregoing, although COMPANY will not enter into any
Sublicense prior to the expiration of the Review Period, COMPANY's right to
grant sublicenses under the PATENT RIGHTS shall not be contingent upon COMPANY's
receipt of JHU's prior approval. COMPANY agrees to provide JHU with a copy of
each executed sublicense agreement promptly upon its execution (and in any event
within ten (10) days thereafter). To the extent that any terms, conditions or
limitations of any sublicense agreement are inconsistent with this Agreement,
those terms, conditions and limitations are null and void against LICENSORS.
2.3 GOVERNMENT RIGHTS. The United States Government may have acquired a
nonexclusive, nontransferable, irrevocable, paid-up license to practice or have
practiced for or on behalf of the United States the inventions described in
PATENT RIGHTS throughout the world. The rights granted herein are additionally
subject to: (i) the requirement that any LICENSED PRODUCT(S) produced for use or
sale within the United States shall be substantially manufactured in the United
States (unless a waiver under 35 USC Section 204 or equivalent is granted by the
appropriate United States government agency), (ii) the right of the United
States government to require JHU, or its licensees, including COMPANY, to grant
sublicenses to responsible applicants on reasonable terms when necessary to
fulfill health or safety needs, and, (iii) other rights acquired by the United
States government under the laws and regulations applicable to the
grant/contract award under which the inventions were made.
-7-
EXHIBIT 10.4
ARTICLE 3
FEES, ROYALTIES, & PAYMENTS
3.1 LICENSE FEE. COMPANY shall pay to JHU within thirty (30) days of the
EFFECTIVE DATE of this Agreement a license fee as set forth in Exhibit A. JHU
will not submit an invoice for the license fee, which is nonrefundable and shall
not be credited against royalties or other fees.
It is agreed an understood that if this Agreement is terminated prior to
January 1st, 2006, COMPANY will pay to JHU, without invoice from JHU, within ten
(10) business days following the termination date of this Agreement, [**].
Otherwise, this amount is due as indicated in paragraph 3.2.
3.2 MINIMUM ANNUAL ROYALTIES. COMPANY shall pay to JHU minimum annual
royalties as set forth in Exhibit A. These minimum annual royalties shall be
due, without invoice from JHU, as applicable, either within thirty (30) days of
the date indicated or each anniversary of the EFFECTIVE DATE, beginning with the
first anniversary. Running royalties accrued under Paragraph 3.3 and paid to JHU
during the one year period preceding an anniversary of the EFFECTIVE DATE shall
be credited against the minimum annual royalties due on that anniversary date.
3.3 RUNNING ROYALTIES. COMPANY shall pay to JHU a running royalty as set
forth in Exhibit A, for each LICENSED PRODUCT(S) sold, for each LICENSED
SERVICE(S) provided, and for each DEVELOPED PRODUCT(S) sold or provided, by
COMPANY, AFFILIATED COMPANIES, SUBLICENSEE(S), and/or DEVELOPED PRODUCT
LICENSEE(S) based on NET SALES and NET SERVICE REVENUES for the term of this
Agreement. Such payments shall be made quarterly. [**].
(a) In order to insure JHU the full royalty payments contemplated
hereunder, COMPANY agrees that in the event any LICENSED PRODUCT(S) or DEVELOPED
PRODUCT(S) shall be sold to an AFFILIATED COMPANY, SUBLICENSEE(S) and/or
DEVELOPED PRODUCT LICENSEE(S) or to a corporation, firm or association with
which COMPANY shall have any agreement, understanding or arrangement with
respect to consideration (such as, among other things, an option to purchase
stock or actual stock ownership, or an arrangement involving division of profits
or special rebates or allowances) the royalties to be paid hereunder for such
LICENSED PRODUCT(S) or DEVELOPED PRODUCT(S) shall be based upon the greater of:
[**].
(b) COMPANY acknowledges that its agreement to make payments to LICENSORS
under this Paragraph regarding rights, products and/or services that are not:
(i) included in PATENT RIGHTS, or, (ii) a LICENSED PRODUCT(S) or LICENSED
SERVICE(S), has been made for purposes of its own convenience, to be paid
hereunder in lieu of other payments as might have otherwise been required to be
paid for the license of the rights delivered hereunder.
3.4 SUBLICENSE CONSIDERATION. In addition to the running royalty as set
forth under Paragraph 3.3, COMPANY shall pay to JHU a percentage of
consideration received for sublicenses
-8-
EXHIBIT 10.4
under this Agreement as set forth in Exhibit A. This sublicense consideration
shall be due, without the need for invoice from JHU, within forty-five (45) days
of COMPANY's receipt of consideration from SUBLICENSEE(S). Such consideration
shall mean consideration of any kind received by the COMPANY or AFFILIATED
COMPANIES from a SUBLICENSEE(S) and/or DEVELOPED PRODUCT LICENSEE(S) for the
grant of a sublicense under this Agreement including transactions related to the
development and manufacture of DEVELOPED PRODUCT(S), such as upfront fees or
milestone fees and including any premium paid by the SUBLICENSEE(S) and/or
DEVELOPED PRODUCT LICENSEE(S) over Fair Market Value for stock of the COMPANY or
an AFFILIATED COMPANY in consideration for such sublicense. However, not
included in such sublicense consideration are amounts paid to the COMPANY or an
AFFILIATED COMPANY for running royalties on LICENSED PRODUCT(S), LICENSED
SERVICE(S) and DEVELOPED PRODUCT(S), profit sharing or other consideration based
on the level of NET SALES or profits, or bona fide support for product
development, research work, clinical studies, reimbursement for patent costs,
and regulatory approvals performed by or for the COMPANY or AFFILIATED COMPANIES
(including third parties on their behalf), each pursuant to a specific
agreement. The term "Fair Market Value" shall mean the average price that the
stock in question is publicly trading at for twenty (20) days prior to the
announcement of its purchase by the SUBLICENSEE(S) or DEVELOPED PRODUCT
LICENSEE(S) or if the stock is not publicly traded, the value of such stock to
be reasonably determined by BOTH PARTIES .
3.5 MILESTONE PAYMENTS. COMPANY shall pay to JHU, without invoice from JHU,
the milestone payments as set forth in Exhibit A. These milestone payments shall
not be deducted from royalty or other payments due to JHU.
3.6 PATENT REIMBURSEMENT. COMPANY will reimburse JHU, within thirty (30)
days of the receipt of an invoice from JHU, for all costs associated with the
preparation, filing, maintenance, and prosecution of PATENT RIGHTS incurred by
LICENSORS on or before the EFFECTIVE DATE of this Agreement. In accordance with
Paragraph 4.1 below, COMPANY will reimburse JHU, within thirty (30) days of the
receipt of an invoice from JHU, for all costs associated with the preparation,
filing, maintenance, and prosecution of PATENT RIGHTS incurred by LICENSORS
subsequent to the EFFECTIVE DATE of this Agreement.
3.7 FORM OF PAYMENT. All payments under this Agreement shall be made in
U.S. Dollars. Checks are to be made payable to "The Xxxxx Xxxxxxx University".
Wire transfers may be made through:
Bank of America
New York, NY
[**]
COMPANY shall be responsible for any and all costs associated with wire
transfers.
3.8 LATE PAYMENTS. In the event that any payment due hereunder is not made
when due, the payment shall accrue interest beginning on the tenth day following
the due date thereof, calculated at the annual rate of the sum of [**]. Each
such payment when made shall be
-9-
EXHIBIT 10.4
accompanied by all interest so accrued. Said interest and the payment and
acceptance thereof shall not negate or waive the right of JHU to seek any other
remedy, legal or equitable, to which it may be entitled because of the
delinquency of any payment including, but not limited to termination of this
Agreement as set forth in Paragraph 9.2.
ARTICLE 4
PATENT PROSECUTION, MAINTENANCE, & INFRINGEMENT
4.1 PROSECUTION & MAINTENANCE. JHU, at COMPANY'S expense as provided in
Section 3.6, shall file, prepare, prosecute and maintain all patents and patent
applications specified under PATENT RIGHTS and, subject to the terms and
conditions of this Agreement, COMPANY shall be licensed thereunder. Title to all
such patents and patent applications shall reside in LICENSORS. LICENSORS shall
have full and complete control over all patent matters in connection therewith
under the PATENT RIGHTS, provided however, that JHU shall (a) cause its patent
counsel to timely copy COMPANY on all official actions and written
correspondence with, and received from, any patent office, and (b) allow COMPANY
a reasonable opportunity to comment and advise JHU on all filings and
communications to be made with any patent office. LICENSORS shall consider and
reasonably incorporate all comments and advice. By concurrent written
notification to JHU and its patent counsel at least thirty (30) days in advance
(or later at JHU's discretion) of any filing or response deadline, or fee due
date, COMPANY may elect not to have a patent application filed in any particular
country or not to pay expenses associated with prosecuting or maintaining any
patent application or patent, provided that COMPANY pays for all costs incurred
up to JHU's receipt of such notification. Failure to provide such notification
can be considered by JHU to be COMPANY'S authorization to proceed at COMPANY'S
expense. Upon such notification, LICENSORS may file, prosecute, and/or maintain
such patent applications or patent at their own expense and for their own
benefit, and any rights or license granted hereunder held by COMPANY, AFFILIATED
COMPANIES or SUBLICENSEE(S) relating to the PATENT RIGHTS which comprise the
subject of such patent applications or patent and/or apply to the particular
country, shall terminate.
4.2 NOTIFICATION. Each Party will notify the other promptly in writing when
any infringement by another is uncovered or suspected.
4.3 INFRINGEMENT. COMPANY shall have the first right to enforce any patent
within PATENT RIGHTS against any infringement or alleged infringement thereof,
and shall at all times keep JHU informed as to the status thereof. Before
COMPANY commences an action with respect to any infringement of such patents,
COMPANY shall give careful consideration to the views of LICENSORS and to
potential effects on the public interest in making its decision whether or not
to xxx. Thereafter, COMPANY may, at its own expense, institute suit against any
such infringer or alleged infringer and control and defend such suit in a manner
consistent with the terms and provisions hereof and recover any damages, awards
or settlements resulting therefrom, subject to Paragraph 4.5. However, no
settlement, consent judgment or other voluntary final disposition of the suit
may be entered into without the prior written consent of LICENSORS, which
consent shall not be unreasonably withheld. This right to xxx for infringement
shall not be used in an arbitrary or
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EXHIBIT 10.4
capricious manner. LICENSORS shall reasonably cooperate in any such litigation
at COMPANY'S expense.
If COMPANY elects not to enforce any patent within the PATENT RIGHTS, then it
shall so notify JHU in writing within ninety (90) days of receiving notice that
an infringement exists, and LICENSORS may, in their sole judgment and at their
own expense, take steps to enforce any patent and control, settle, and defend
such suit in a manner consistent with the terms and provisions hereof, and
recover, for their own account, any damages, awards or settlements resulting
therefrom.
4.4 PATENT INVALIDITY SUIT. If a declaratory judgment action is brought
naming COMPANY as a defendant and alleging invalidity of any of the PATENT
RIGHTS, LICENSORS may elect to take over the sole defense of the action at their
own expense. COMPANY shall cooperate fully with LICENSORS in connection with any
such action. In the event that LICENSORS choose not to take over the sole
defense of the action at their own expense, COMPANY may elect to take over the
sole defense of the action at its own expense. However, no settlement, consent
judgment or other voluntary final disposition of the suit may be entered into
without the prior written consent of LICENSORS, which consent shall not be
unreasonably withheld.
4.5 RECOVERY. Any recovery by COMPANY under Paragraph 4.3 shall be deemed
to reflect loss of commercial sales, and COMPANY shall pay to JHU [**].
ARTICLE 5
OBLIGATIONS OF THE PARTIES
5.1 REPORTS. COMPANY shall provide to JHU the following written reports
according to the following schedules.
(a) Upon first commercial sale, COMPANY shall provide quarterly Royalty
Reports, substantially in the format of Exhibit B and due within thirty (30)
days of the end of each calendar quarter. Royalty Reports shall disclose the
amount of LICENSED PRODUCT(S), LICENSED SERVICE(S) and DEVELOPED PRODUCT(S)
sold, the total NET SALES and NET SERVICE REVENUES of such LICENSED PRODUCT(S),
LICENSED SERVICE(S) and DEVELOPED PRODUCT(S), and the running royalties due to
JHU as a result of NET SALES and NET SERVICE REVENUES by COMPANY, AFFILIATED
COMPANIES, SUBLICENSEE(S), and DEVELOPED PRODUCT LICENSEE(S) thereof. Payment of
any such royalties due shall accompany such Royalty Reports.
(b) Until COMPANY, an AFFILIATED COMPANY, a SUBLICENSEE(S), or a DEVELOPED
PRODUCT LICENSEE(S) has achieved a first commercial sale of a LICENSED PRODUCT,
LICENSED SERVICE or DEVELOPED PRODUCT, or received FDA market approval, COMPANY
shall provide semiannual Diligence Reports, due within thirty (30) days of the
end of every June and December following the EFFECTIVE DATE of this Agreement.
These Diligence Reports shall describe COMPANY'S, AFFILIATED COMPANIES,
SUBLICENSEE(S)'S or any DEVELOPED PRODUCT LICENSEE(S) technical efforts towards
meeting its obligations under the terms of this Agreement.
-11-
EXHIBIT 10.4
(c) COMPANY shall provide Annual Reports within thirty (30) days of the end
of every December following the EFFECTIVE DATE of this Agreement. Annual Reports
shall include:
(i) evidence of insurance as required under Paragraph 10.4, or, a
statement of why such insurance is not currently required; and
(ii) identification of all AFFILIATED COMPANIES which have exercised
rights pursuant to Paragraph 2.1, or, a statement that no AFFILIATED
COMPANY has exercised such rights; and
(iii) notice of all FDA approvals of any LICENSED PRODUCT(S), LICENSED
SERVICE(S) or DEVELOPED PRODUCT(S) obtained by COMPANY, AFFILIATED
COMPANY, SUBLICENSEE, or DEVELOPED PRODUCT LICENSEE the patent(s) or
patent application(s) licensed under this Agreement upon which such
product or service is based, and the commercial name of such product
or service, or, in the alternative, a statement that no FDA approvals
have been obtained.
5.2 RECORDS. COMPANY shall make and retain, for a period of [**] years
following the period of each report required by Paragraph 5.1, true and accurate
records, files and books of account containing all the data reasonably required
for the full computation and verification of sales and other information
required in Paragraph 5.1. Such books and records shall be in accordance with
generally accepted accounting principles consistently applied. COMPANY shall
permit the inspection and copying of such records, files and books of account by
JHU or its agents during regular business hours upon ten (10) business days'
written notice to COMPANY. Such inspection shall not be made more than once each
calendar year. All costs of such inspection and copying shall be paid by
LICENSORS, provided that if any such inspection shall reveal that an error has
been made in the amount equal to [**] or more of such payment, such costs shall
be borne by COMPANY. As a condition to entering into any such agreement, COMPANY
shall include in any agreement with its AFFILIATED COMPANIES, its
SUBLICENSEE(S), or DEVELOPED PRODUCT LICENSEE(S) which permits such party to
make, use, sell or import the LICENSED PRODUCT(S) or DEVELOPED PRODUCT(S) or
provide LICENSED SERVICE(S), a provision requiring such party to retain records
of sales of LICENSED PRODUCT(S), DEVELOPED PRODUCT(S) and records of LICENSED
SERVICE(S) and other information as required in Paragraph 5.1 and permit JHU to
inspect such records as required by this Paragraph.
5.3 COMMERCIALLY REASONABLE. COMPANY shall exercise commercially reasonable
efforts to develop and to introduce the LICENSED PRODUCT(S), LICENSED SERVICE(S)
or DEVELOPED PRODUCT(S) into the commercial market as soon as practicable,
consistent with sound and reasonable business practice and judgment; thereafter,
until the expiration or termination of this Agreement, COMPANY shall endeavor to
keep LICENSED PRODUCT(S), LICENSED SERVICE(S) and DEVELOPED PRODUCT(S)
commercially reasonably available to the public. COMPANY shall also exercise
commercially reasonable efforts to develop LICENSED PRODUCT(S) suitable for
different indications within the LICENSED FIELD, so that the PATENT RIGHTS can
be commercialized as broadly and as speedily as good scientific and business
judgment would deem possible.
5.4 OTHER PRODUCTS. After clinical or other evidence, provided in writing
by LICENSORS or by another party, to COMPANY, demonstrating the practicality of
a particular market or use within the LICENSED FIELD which is not being
developed or commercialized by
-12-
EXHIBIT 10.4
COMPANY, COMPANY shall either provide JHU with a reasonable development plan and
start development or attempt to reasonably sublicense the particular market or
use to a third party. If within six (6) months of such notification by JHU,
COMPANY has not initiated such development efforts or sublicensed that
particular market or use, LICENSORS may terminate this license for such
particular market or use. This Paragraph shall not be applicable if COMPANY
reasonably demonstrates to LICENSORS that commercializing such LICENSED
PRODUCT(S) or LICENSED SERVICE(S) or granting such a sublicense in said market
or use would have a potentially adverse commercial effect upon marketing or
sales of the LICENSED PRODUCT(S) developed or being sold by COMPANY.
5.5 PATENT ACKNOWLEDGEMENT. COMPANY agrees that all packaging containing
individual LICENSED PRODUCT(S) sold by COMPANY, AFFILIATED COMPANIES and
SUBLICENSEE(S) of COMPANY will be marked with the number of the applicable
patent(s) licensed hereunder in accordance with each country's patent laws.
ARTICLE 6
REPRESENTATIONS
6.1 DUTIES OF THE PARTIES. LICENSORS are not a commercial organizations.
They are institutes of research and education. Therefore, LICENSORS have no
ability to evaluate the commercial potential of any PATENT RIGHTS, LICENSED
PRODUCT, DEVELOPED PRODUCT or other license or rights granted in this Agreement.
It is therefore incumbent upon COMPANY to evaluate the rights and products in
question, to examine the materials and information provided by LICENSORS, and to
determine for itself the validity of any PATENT RIGHTS, its freedom to operate,
and the value of any LICENSED PRODUCT(S) or LICENSED SERVICE(S) or other rights
granted.
6.2 REPRESENTATIONS BY LICENSORS. LICENSORS warrant that they have good and
marketable title to their interest in the invention(s) claimed under PATENT
RIGHTS with the exception of certain retained rights of the United States
Government, which may apply if any part of the JHU research was funded in whole
or in part by the United States Government. LICENSORS do not warrant the
validity of any patents or that practice under such patents or use of such
material shall be free of infringement. EXCEPT AS EXPRESSLY SET FORTH IN THIS
PARAGRAPH 6.2, COMPANY, AFFILIATED COMPANIES AND SUBLICENSEE(S) AGREE THAT THE
PATENT RIGHTS ARE PROVIDED "AS IS", AND THAT LICENSORS MAKE NO REPRESENTATION OR
WARRANTY WITH RESPECT TO THE PERFORMANCE OF LICENSED PRODUCT(S), LICENSED
SERVICE(S) AND DEVELOPED PRODUCT(S) INCLUDING THEIR SAFETY, EFFECTIVENESS, OR
COMMERCIAL VIABILITY, OR WITH RESPECT TO THEIR UTILITY IN MAKING A DEVELOPED
PRODUCT(S) OR THE USEFULNESS OF SUCH A DEVELOPED PRODUCT(S). LICENSORS DISCLAIM
ALL WARRANTIES WITH REGARD TO PRODUCT(S) AND SERVICE(S) LICENSED UNDER THIS
AGREEMENT, INCLUDING, BUT NOT LIMITED TO, ALL WARRANTIES, EXPRESSED OR IMPLIED,
OF MERCHANTABILITY AND FITNESS FOR ANY PARTICULAR PURPOSE. NOTWITHSTANDING ANY
OTHER PROVISION OF THIS
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EXHIBIT 10.4
AGREEMENT, LICENSORS ADDITIONALLY DISCLAIM ALL OBLIGATIONS AND LIABILITIES ON
THE PART OF LICENSORS AND INVENTORS, FOR DAMAGES, INCLUDING, BUT NOT LIMITED TO,
DIRECT, INDIRECT, SPECIAL, AND CONSEQUENTIAL DAMAGES, ATTORNEYS' AND EXPERTS'
FEES, AND COURT COSTS (EVEN IF LICENSORS HAVE BEEN ADVISED OF THE POSSIBILITY OF
SUCH DAMAGES, FEES OR COSTS), ARISING OUT OF OR IN CONNECTION WITH THE
MANUFACTURE, USE, OR SALE OF THE PRODUCT(S) AND SERVICE(S) LICENSED UNDER THIS
AGREEMENT. COMPANY, AFFILIATED COMPANIES, SUBLICENSEE(S) AND DEVELOPED PRODUCT
LICENSEES ASSUME ALL RESPONSIBILITY AND LIABILITY FOR LOSS OR DAMAGE CAUSED BY A
PRODUCT AND/OR SERVICE MANUFACTURED, USED, OR SOLD BY COMPANY, ITS
SUBLICENSEE(S), DEVELOPED PRODUCT LICENSEE(S) AND AFFILIATED COMPANIES WHICH IS
A LICENSED PRODUCT(S), LICENSED SERVICE(S) OR DEVELOPED PRODUCT(S) AS DEFINED IN
THIS AGREEMENT.
ARTICLE 7
INDEMNIFICATION
7.1 INDEMNIFICATION. LICENSORS and the Inventors will have no legal
liability exposure to third parties if LICENSORS do not license the LICENSED
PRODUCT(S) and LICENSED SERVICE(S), and any royalties LICENSORS and the
Inventors may receive is not adequate compensation for such legal liability
exposure. Therefore, LICENSORS require COMPANY to protect LICENSORS and
Inventors from such exposure to the same manner and extent to which insurance,
if available, would protect LICENSORS and Inventors. Furthermore, LICENSORS and
the Inventors will not, under the provisions of this Agreement or otherwise,
have control over the manner in which COMPANY or its AFFILIATED COMPANIES or its
SUBLICENSEE(S), or DEVELOPED PRODUCT LICENSEE(S) or those operating for its
account or third parties who purchase LICENSED PRODUCT(S), LICENSED SERVICE(S)
or DEVELOPED PRODUCT(S) from any of the foregoing entities, develop,
manufacture, market or practice the inventions of LICENSED PRODUCT(S), LICENSED
SERVICE(S) and DEVELOPED PRODUCT(S). Therefore, COMPANY, AFFILIATED COMPANY,
SUBLICENSEE, and DEVELOPED PRODUCT LICENSEE shall indemnify, defend with counsel
reasonably acceptable to LICENSORS, and hold LICENSORS, The Xxxxx Xxxxxxx Health
Systems, their present and former trustees, officers, Inventors of PATENT
RIGHTS, agents, faculty, employees and students harmless as against any
judgments, fees, expenses, or other costs arising from or incidental to any
product liability or other lawsuit, claim, demand or other action brought as a
consequence of the practice of said inventions by any of the foregoing entities,
whether or not LICENSORS or said Inventors, either jointly or severally, are
named as a party defendant in any such lawsuit and whether or not LICENSORS or
the Inventors are alleged to be negligent or otherwise responsible for any
injuries to persons or property. Practice of the inventions covered by LICENSED
PRODUCT(S), LICENSED SERVICE(S) and DEVELOPED PRODUCT(S), by an AFFILIATED
COMPANY or an agent or a SUBLICENSEE(S) or a DEVELOPED PRODUCT LICENSEE(S) or a
third party on behalf of or for the account of COMPANY or by a third party who
purchases LICENSED PRODUCT(S) and LICENSED SERVICE(S), or purchases or licenses
DEVELOPED PRODUCT(S), from COMPANY, shall be considered COMPANY'S practice of
said inventions for purposes of this Paragraph. The obligation of COMPANY to
defend and indemnify as set out in
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EXHIBIT 10.4
this Paragraph shall survive the termination of this Agreement, shall continue
even after assignment of rights and responsibilities to an affiliate or
sublicensee, and shall not be limited by any other limitation of liability
elsewhere in this Agreement.
ARTICLE 8
CONFIDENTIALITY
8.1 CONFIDENTIALITY. If necessary, the COMPANY will exchange information,
which it considers to be confidential. The recipient of such information agrees
to accept the disclosure of said information which is marked as confidential at
the time it is sent to the recipient (the "Confidential Information"), and to
employ all reasonable efforts to maintain the Confidential Information secret
and confidential, such efforts to be no less than the degree of care employed by
the recipient to preserve and safeguard its own confidential information.
Confidential Information that is disclosed orally or visually shall be
documented in a written notice prepared by the Disclosing Party and delivered to
the Receiving Party within thirty (30) days of the date of disclosure; such
notice shall summarize the Confidential Information disclosed to the Receiving
Party and reference the time and place of disclosure The Confidential
Information shall not be disclosed or revealed to anyone except employees of the
recipient who have a need to know the information and who have entered into a
secrecy agreement with the recipient under which such employees are required to
maintain confidential the Confidential Information of the recipient and such
employees shall be advised by the recipient of the confidential nature of the
Confidential Information and that the Confidential Information shall be treated
accordingly.
All reports produced in accordance with Section 5 of this Agreement shall
be treated as Confidential Information.
The obligations of this Paragraph shall also apply to AFFILIATED COMPANIES
and/or SUBLICENSEE(S) provided such information by COMPANY. LICENSORS,
COMPANY'S, AFFILIATED COMPANIES, and SUBLICENSEES' obligations under this
Paragraph shall extend until three (3) years after the termination of this
Agreement.
8.2 EXCEPTIONS. The recipient's obligations under Paragraph 8.1 shall not
extend to any part of the Confidential Information:
a. that can be demonstrated to have been in the public domain or
publicly known and readily available to the trade or the public
prior to the date of the disclosure; or
b. that can be demonstrated, from written records to have been in
the recipient's possession or readily available to the recipient
from another source not under obligation of secrecy to the
disclosing party prior to the disclosure; or
c. that becomes part of the public domain or publicly known by
publication or otherwise, not due to any unauthorized act by the
recipient; or
-15-
EXHIBIT 10.4
D. that is demonstrated from written records to have been developed
by or for the receiving party without reference to Confidential
Information disclosed by the disclosing party.
E. that is required to be disclosed by law, government regulation or
court order.
ARTICLE 9
TERM & TERMINATION
9.1 TERM. (a) The term of this Agreement shall commence on the EFFECTIVE
DATE and shall continue, in each country on a product by product and country by
country basis, until the date of expiration of the last to expire patent
included within PATENT RIGHTS in that country or if no patents issue then for a
term of twenty (20) years from the EFFECTIVE DATE of this Agreement. (b) The
royalty obligations for the sale or provision of DEVELOPED PRODUCT(S) shall
terminate in any country the later of: (i) with respect to NET SALES, ten (10)
years from the time of first commercial sale of a regulatory approved product;
or, (ii) the expiration of the last to expire of any patents covering the
DEVELOPED PRODUCT(S) issued in that country.
9.2 TERMINATION BY EITHER PARTY. This Agreement may be terminated by either
Party, in the event that the other Party (a) files or has filed against it a
petition under the Bankruptcy Act, makes an assignment for the benefit of
creditors, has a receiver appointed for it or a substantial part of its assets,
or otherwise takes advantage of any statute or law designed for relief of
debtors or (b) fails to perform or otherwise breaches any of its obligations
hereunder, if, following the giving of notice by the terminating Party of its
intent to terminate and stating the grounds therefor, the Party receiving such
notice shall not have cured the failure or breach within sixty (60) days. In no
event, however, shall such notice or intention to terminate be deemed to waive
any rights to damages or any other remedy, which the Party giving notice of
breach may have as a consequence of such failure or breach.
9.3 TERMINATION BY COMPANY. COMPANY may terminate this Agreement and the
license granted herein, for any reason, upon giving JHU ninety (90) days written
notice.
9.4 OBLIGATIONS AND DUTIES UPON TERMINATION. If this Agreement is
terminated, both COMPANY and LICENSORS shall be released from all obligations
and duties imposed or assumed hereunder to the extent so terminated, except as
expressly provided to the contrary in this Agreement. Upon termination, the
Parties shall cease any further use of the other Parties' Confidential
Information disclosed to the receiving Party by the other Party. Termination of
this Agreement, for whatever reason, shall not affect the obligation of either
Party to make any payments for which it is liable prior to or upon such
termination, including, but not limited to, the payments due under Paragraphs
3.1 and 3.2 of this Agreement. Termination shall not affect LICENSORS' right to
recover unpaid royalties, fees, reimbursement for patent expenses, or other
forms of financial compensation incurred prior to termination. Upon termination,
COMPANY shall submit a final royalty report to JHU and any royalty payments,
fees, un-reimbursed patent expenses
-16-
EXHIBIT 10.4
and other financial compensation due to LICENSORS shall become immediately
payable. Furthermore, upon termination of this Agreement, all rights in and to
the licensed technology, including PATENT RIGHTS, shall revert immediately to
LICENSORS at no cost to LICENSORS. Upon termination of this Agreement, any
SUBLICENSEE(S) shall become a direct licensee of LICENSORS, provided that
LICENSORS' obligations to SUBLICENSEE(S) are no greater than LICENSORS'
obligations to COMPANY under this Agreement. COMPANY shall provide written
notice of such to each SUBLICENSEE(S) with a copy of such notice provided to
JHU.
9.5 OBLIGATION REGARDING DEVELOPED PRODUCT(S). Termination shall not affect
COMPANY'S, AFFILIATED COMPANY'S, SUBLICENSEE'S OR DEVELOPED PRODUCT LICENSEES'
obligation under Paragraph 9.1(b) to pay royalty to JHU on a DEVELOPED
PRODUCT(S).
ARTICLE 10
MISCELLANEOUS
10.1 USE OF NAME. COMPANY, AFFILIATED COMPANIES, SUBLICENSEE(S) and
DEVELOPED PRODUCT LICENSEE(S) shall not use the name of LICENSORS or The Xxxxx
Xxxxxxx Health System or any of their constituent parts, such as the Xxxxx
Xxxxxxx Hospital or any contraction thereof or the name of Inventors in any
advertising, promotional, sales literature or fundraising documents without
prior written consent from an authorized representative of JHU. COMPANY,
AFFILIATED COMPANIES, SUBLICENSEE(S) and DEVELOPED PRODUCT LICENSEE(S) shall
allow at least seven (7) business days notice of any proposed public disclosure
for JHU's review and comment or to provide written consent.
10.2 NO PARTNERSHIP. Nothing in this Agreement shall be construed to create
any agency, employment, partnership, joint venture or similar relationship among
the Parties other than that of a licensor/licensee. Neither Party shall have any
right or authority whatsoever to incur any liability or obligation (express or
implied) or otherwise act in any manner in the name or on the behalf of the
other, or to make any promise, warranty or representation binding on the other.
10.3 NOTICE OF CLAIM. Each Party shall give the other or its representative
immediate notice of any suit or action filed, or prompt notice of any claim
made, against them arising out of the performance of this Agreement or arising
out of the practice of the inventions licensed hereunder.
10.4 PRODUCT LIABILITY. Prior to initial human testing or first commercial
sale of any LICENSED PRODUCT(S), LICENSED SERVICE(S) or DEVELOPED PRODUCT(S) as
the case may be in any particular country, COMPANY shall establish and maintain,
in each country in which COMPANY, an AFFILIATED COMPANY, SUBLICENSEE(S) or
DEVELOPED PRODUCT LICENSEE(S) shall test or sell LICENSED PRODUCT(S), LICENSED
SERVICE(S) or DEVELOPED PRODUCT(S), product liability or other appropriate
insurance coverage in the minimum amount of [**] per claim and will annually
present evidence to JHU that such coverage is being maintained. Upon JHU's
request, COMPANY will furnish JHU with a Certificate of Insurance of each
product liability insurance policy obtained. LICENSORS shall be listed as an
-17-
EXHIBIT 10.4
additional insured in said insurance policies. If such Product Liability
insurance is underwritten on a 'claims made' basis, COMPANY agrees that any
change in underwriters during the term of this Agreement will require the
purchase of 'prior acts' coverage to ensure that coverage will be continuous
throughout the term of this Agreement.
10.5 GOVERNING LAW. This Agreement shall be construed, and legal relations
between the Parties hereto shall be determined, in accordance with the laws of
the State of Maryland applicable to contracts solely executed and wholly to be
performed within the State of Maryland without giving effect to the principles
of conflicts of laws. Any disputes between the Parties to the Agreement shall be
brought in the state or federal courts of Maryland. The Parties agree to waive
their right to a jury trial.
10.6 NOTICE. All notices or communication required or permitted to be given
by either Party hereunder shall be deemed sufficiently given if mailed by
registered mail or certified mail, return receipt requested, or sent by
overnight courier, such as Federal Express, to the other Party at its respective
address set forth below or to such other address as one Party shall give notice
of to the other from time to time hereunder. Mailed notices shall be deemed to
be received on the third business day following the date of mailing. Notices
sent by overnight courier shall be deemed received the following business day.
If to COMPANY: Director, Business Development
000 Xxxxx Xxxxxx, 00xx Xxxxx
Xxxxxxxxx, XX 00000
PHONE: (000) 000-0000
FAX: (000) 000-0000
If to JHU: Xxxxx Xxxxxxx Technology Transfer
The Xxxxx Xxxxxxx University
000 X. Xxxxxxx Xxxxxx
0xx Xxxxx
Xxxxxxxxx, XX 00000
Attn: Director
If to INSTITUTION: Director
Office of Science and Technology
Zhejiang University
Xx.00, Xxx Xx Xxxx
Xxxxxxxx, Xxxxxxxx 000000
P.R. China
x00 000 00000000
x00 000 00000000
10.7 COMPLIANCE WITH ALL LAWS. In all activities undertaken pursuant to
this Agreement, the Parties covenant and agree that each will in all material
respects comply with such Federal, state
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EXHIBIT 10.4
and local laws and statutes, as may be in effect at the time of performance and
all valid rules, regulations and orders thereof regulating such activities.
10.8 SUCCESSORS AND ASSIGNS. Neither this Agreement nor any of the rights
or obligations created herein, except for the right to receive any remuneration
hereunder, may be assigned by either Party, in whole or in part, without the
prior written consent of the other Parties, except that either Party shall be
free to assign this Agreement in connection with any sale of substantially all
of its assets without the consent of the other. This Agreement shall bind and
inure to the benefit of the successors and permitted assigns of the Parties
hereto.
10.9 NO WAIVERS; SEVERABILITY. No waiver of any breach of this Agreement
shall constitute a waiver of any other breach of the same or other provision of
this Agreement, and no waiver shall be effective unless made in writing. Any
provision hereof prohibited by or unenforceable under any applicable law of any
jurisdiction shall as to such jurisdiction be deemed ineffective and deleted
herefrom without affecting any other provision of this Agreement. It is the
desire of the Parties hereto that this Agreement be enforced to the maximum
extent permitted by law, and should any provision contained herein be held by
any governmental agency or court of competent jurisdiction to be void, illegal
and unenforceable, the Parties shall negotiate in good faith for a substitute
term or provision which carries out the original intent of the Parties.
10.10 ENTIRE AGREEMENT; AMENDMENT. The Parties acknowledge that they have
read this entire Agreement and that this Agreement, including the attached
Exhibits constitutes the entire understanding and contract between the Parties
hereto and supersedes any and all prior or contemporaneous oral or written
communications with respect to the subject matter hereof, all of which
communications are merged herein. It is expressly understood and agreed that (i)
there being no expectations to the contrary between the Parties hereto, no usage
of trade, verbal agreement or another regular practice or method dealing within
any industry or between the Parties hereto shall be used to modify, interpret,
supplement or alter in any manner the express terms of this Agreement; and (ii)
this Agreement shall not be modified, amended or in any way altered except by an
instrument in writing signed by all of the Parties hereto.
10.11 DELAYS OR OMISSIONS. Except as expressly provided herein, no delay or
omission to exercise any right, power or remedy accruing to any Party hereto,
shall impair any such right, power or remedy to such Party nor shall it be
construed to be a waiver of any such breach or default, or an acquiescence
therein, or in any similar breach or default be deemed a waiver of any other
breach or default theretofore or thereafter occurring. Any waiver, permit,
consent or approval of any kind or character on the part of any Party of any
breach or default under this Agreement, or any waiver on the part of any Party
of any provisions or conditions of this Agreement, must be in writing and shall
be effective only to the extent specifically set forth in such writing. All
remedies either under this Agreement or by law or otherwise afforded to any
Party, shall be cumulative and not alternative.
10.12 FORCE MAJEURE. If either Party fails to fulfill its obligations
hereunder (other than an obligation for the payment of money), when such failure
is due to an act of God, or other circumstances beyond its reasonable control,
including but not limited to fire, flood, civil commotion, riot, war (declared
and undeclared), revolution, or embargoes, then said failure shall be
-19-
EXHIBIT 10.4
excused for the duration of such event and for such a time thereafter as is
reasonable to enable the Parties to resume performance under this Agreement,
provided however, that in no event shall such time extend for a period of more
than one hundred eighty (180) days.
10.13 FURTHER ASSURANCES. Each Party shall, at any time, and from time to
time, prior to or after the EFFECTIVE DATE of this Agreement, at reasonable
request of the other Parties, execute and deliver to the others such instruments
and documents and shall take such actions as may be required to more effectively
carry out the terms of this Agreement.
10.14 SURVIVAL. All representations, warranties, covenants and agreements
made herein and which by their express terms or by implication are to be
performed after the execution and/or termination or expiration hereof, or are
prospective in nature, shall survive such execution and/or termination or
expiration, as the case may be. This shall include Paragraphs 3.7 (Late
Payments), 5.2 (Records), 9.5 (Obligation regarding DEVELOPED PRODUCTS) and
Articles 6, 7, 8, 9, and 10.
10.15 NO THIRD PARTY BENEFICIARIES. Nothing in this Agreement shall be
construed as giving any person, firm, corporation or other entity, other than
the Parties hereto and their successors and permitted assigns, any right, remedy
or claim under or in respect of this Agreement or any provision hereof.
10.16 HEADINGS. Article headings are for convenient reference and not a
part of this Agreement. All Exhibits are incorporated herein by this reference.
10.17 COUNTERPARTS. This Agreement may be executed in counterparts, each of
which shall be deemed an original and all of which when taken together shall be
deemed but one instrument.
-20-
EXHIBIT 10.4
IN WITNESS WHEREOF, this Agreement shall take effect as of the EFFECTIVE
DATE when it has been executed below, by the duly authorized representatives of
the Parties.
THE XXXXX XXXXXXX UNIVERSITY VIACELL, INC.
/s/ R. Xxxxx Xxxxx /s/ Xxxx X. Beer
------------------------------------- ----------------------------------------
R. Xxxxx Xxxxx, Ph.D., MBA Name: Xxxx X. Beer
Senior Director, Title: Chief Executive Officer
Xxxxx Xxxxxxx Technology Transfer
8/29/05
8/29/05 (Date)
(Date)
ZHEJIANG UNIVERSITY
-------------------------------------
Name: /s/ Xxxxxxx Xxxx
-------------------------------
Title: Director,
------------------------------
Office of Science and Technology
-------------------------------------
August 24, 2005
(Date)
-21-
EXHIBIT 10.4
EXHIBIT A
LICENSE FEE & ROYALTIES
[**]
-22-
EXHIBIT 10.4
EXHIBIT B
QUARTERLY SALES & ROYALTY REPORT
FOR LICENSE AGREEMENT BETWEEN _____________ AND
THE XXXXX XXXXXXX UNIVERSITY AND ZHEJIANG UNIVERSITY DATED
----------
FOR PERIOD OF ______________ TO ______________
TOTAL ROYALTIES DUE FOR THIS PERIOD $___________
PRODUCT *JHU 1ST COMMERCIAL TOTAL NET ROYALTY AMOUNT
ID PRODUCT NAME REFERENCE SALE DATE SALES/SERVICES RATE DUE
------- ------------ --------- -------------- -------------- ------- ------
* Please provide the JHU Reference Number or Patent Reference
This report format is to be used to report quarterly royalty statements to
JHU. It should be placed on COMPANY letterhead and accompany any royalty
payments due for the reporting period. This report shall be submitted even if no
sales are reported.
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