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EXHIBIT 10.46
THE CONFIDENTIAL PORTION OF THIS CONTRACT HAS BEEN OMITTED PURSUANT TO
REGULATION 240.25B-2(B) OF THE SECURITIES EXCHANGE ACT OF 1934, AND HAS BEEN
FILED SEPARATELY WITH THE COMMISSION.
ASSIGNMENT OF LICENSE
AND
RESTATED LICENSE AGREEMENT
This Assignment of License and Restated License Agreement ("Agreement")
dated this 20th day of November, 1996 between Competitive Technologies, Inc. a
Delaware corporation having its principal office at 0000 Xxxx Xxxx Xxxx,
Xxxxxxxx, Xxxxxxxxxxx 00000 (hereinafter referred to as "LICENSOR"), United
States Biochemical Corporation, a corporation having a place of business at
00000 Xxxxx Xxxx, Xxxxxxxxx, Xxxx 00000 (hereinafter referred to as "USB") and
Ribozyme Pharmaceuticals, Inc., a Delaware corporation having its principal
office at 0000 Xxxxxxxxxx Xxxxx, Xxxxxxx, Xxxxxxxx 00000 (hereinafter referred
to as "LICENSEE"), replaces that certain Second Restated License Agreement
dated September 1, 1993 between LICENSOR (as successor to University Patents,
Inc.) and USB, as amended by that certain Letter Agreement dated October 13,
1994 (the "Prior License Agreement") and that certain Restated Sublicense
Agreement dated September 1, 1993 between USB and LICENSEE (the "Prior
Sublicense Agreement"), and upon the execution of this Agreement both the Prior
License Agreement and the Prior Sublicense Agreement shall become null, void
and of no further force or effect except as expressly provided herein.
WHEREAS, under a Servicing Agreement between the University of Colorado
Foundation (the "Foundation") and LICENSOR, LICENSOR is assignee of all right,
title and interest of the Foundation to certain patent rights relating to
ribozymes owned by University Research Corporation, a Colorado corporation and
wholly owned subsidiary of the Foundation ("URC"), and has the exclusive right
to license to others the entire interest in such patent rights; and
WHEREAS, pursuant to the Prior License Agreement USB is the exclusive
licensee of LICENSOR of such patent rights; and
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WHEREAS, pursuant to the Prior Sublicense Agreement, LICENSEE is the
exclusive sublicensee of USB's rights under the Prior License Agreement with
the exclusive right to develop and commercialize such patent rights, and
pursuant to which LICENSEE is generally obligated to pay a royalty to USB of
[ ] of Product Units and Licensed Services (as those terms are defined therein)
and a royalty and other payments to LICENSOR through USB as required pursuant
to the Prior License Agreement; and
WHEREAS, LICENSEE is the sublicensee of certain subsequent patent rights
relating to ribozymes owned by URC and licensed by URC to USB, pursuant to that
certain Sublicense Agreement dated September 1, 1993, between USB and LICENSEE
(the "USB Sublicense Agreement"); and
WHEREAS, contemporaneously herewith, USB and LICENSEE have amended the
USB Sublicense Agreement by entering into an Amended and Restated Sublicense
Agreement granting LICENSEE the exclusive rights to commercialize the patent
rights licensed to LICENSEE by USB under the USB Sublicense Agreement, in
exchange for 22,500 shares of the Common Stock ($.01 par value) of LICENSEE
("Common Stock"); and
WHEREAS, contemporaneously herewith, LICENSEE and USB have entered into
a Stock Subscription Agreement regarding USB's acquisition of Common Stock,
which agreement is part of the consideration to USB hereunder and under the
Amended and Restated Sublicense Agreement; and
WHEREAS, pursuant to Article XIII thereof, USB and LICENSEE have agreed
that USB may hereby assign to LICENSOR all of its rights and obligations under
the Prior License Agreement, and LICENSOR and LICENSEE desire to amend the
Prior License Agreement hereby;
NOW, THEREFORE, in consideration of the foregoing and the mutual
agreements set forth herein, the parties agree as follows:
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ARTICLE I.
DEFINITIONS
1. "Commercial Sale" shall mean any transaction which transfers to a
purchaser physical possession and title to each Product Unit, after which
transfer the seller has no right or power to determine the purchaser's resale
price, if any, and any transaction which involves the performance of Licensed
Services for a third-party after which no further services are performed.
Transfer of possession and title to, or performance of a Licensed Services for,
an "Affiliated or Related Interest" shall not constitute a Commercial Sale. An
Affiliated or Related Interest means an entity in which LICENSEE has a direct
or indirect ownership interest in excess of fifty percent (50%), or any entity
which directly or indirectly, through one or more intermediaries, controls, is
controlled by, or is under common control with LICENSEE. If a purchaser of a
Product Unit or Licensed services is not independent of LICENSEE and if the
sale to such purchaser, or performance of Licensed Services, is at a lower
price than other sales of similar Product Units to, or the performance is
Licensed Services for, independent purchasers of substantially similar size, in
substantially similar amounts, operating in markets of substantially similar
competitive conditions, then the transfer of the Product Unit to, or
performance of Licensed Services for such nonindependent purchaser shall not
constitute a Commercial Sale thereof at the price charged such purchaser, but
the Commercial Sale shall be deemed to have occurred at the Net Selling Price
at which such Product Unit or Licensed Services was last sold, or would have
been sold, to an independent purchaser under similar conditions.
2. "Improvement" shall mean any invention the practice of which
would infringe the claims covered by the Licensed Patents, which invention was
made by the Inventors and/or persons acting under their direction and control
at the University of Colorado, which is the work product of the Research
Support Funding Agreement between USB and the Foundation entered into on May
20, 1987 (the "RSFA") and which was conceived or reduced to practice during the
term of the RSFA.
3. "Improvement Patents" shall mean any patent application and any
patents issuing thereon throughout the world including any extensions,
renewals, continuations, continuations-
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in-part, divisions, patents of additions and/or reissues thereof filed upon an
Improvement, and to which LICENSOR has or shall have the right to grant
licenses during the term hereof.
4. "Intermediate Products" shall mean the RNA enzymes described in
Claims 1-47, 70 and 73 of the '327 Patent Application, RNA enzymes which may be
claimed in any other Licensed Patent and/or Improvement Patent, and plasmids
used as vectors for the delivery of ribozymes (either viral or nonviral), made
and sold in bulk by LICENSEE to Manufacturers.
5. "Inventors" shall mean Xxxxxx X. Xxxx, Xxxxxx X. Xxxx and Xxxxxxx
X. Been.
6. "License Year" shall mean the twelve (12) month period which
commences upon the effective date of this Agreement, and each ensuing twelve
(12) month period during the term of this Agreement.
7. "Licensed Methods" shall mean any invention, method, process,
procedure or technology which is covered by and/or may be claimed in the
Licensed Patent and any Improvement Patent.
8. "Licensed Patents"shall mean the inventions and discoveries which
are the subject of, or which are covered in whole or in part, by the claims
included in (i) U.S. Patent Application Serial Number 937,327, filed 3 December
1986 entitled RNA RIBOZYME POLYMERASES, DEPHOSPHORYLASES, RESTRICTION
ENDORIBONUCLEASES and METHODS (the "'327 Patent Application") , a copy of the
Claims of which is attached hereto and marked EXHIBIT "A", and (ii) the United
States Patents and the patent applications listed on Exhibit "B" attached
hereto, and any patents issuing thereon as well as any corresponding patent
applications or any patents that may issue thereon throughout the world,
including any extensions, renewals, divisions, continuations, continuations-in-
part, patents of addition, and/or reissues thereof, including Improvement
Patents, and to which LICENSOR has or shall have the right to grant licenses
during the term hereof. It is understood that any reference in this Agreement
to claim numbers as recited in the '327 Patent Application as filed on December
3, 1986, or other Licensed Patents corresponding thereto or derived therefrom
(including but not limited to those included in Exhibit "B"), shall be deemed
to refer to any and all claims which are or have been renumbered, deleted or
added during the course of prosecution of the '327 patent application and are
included in such Licensed Patents.
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9. "Licensed Products" shall mean the RNA enzymes described in
Claims 1-47, 70 and 73 of the '327 Patent Application and RNA enzymes which may
be claimed in any other Licensed Patent and/or Improvement Patent, packaged and
sold by LICENSEE for use as (by way of illustration and not of limitation)
research reagents, diagnostic products, pharmaceutical products, agricultural
biochemical products, veterinary products, cell culture and/or fermentation
products, or otherwise, and plasmids used as vectors for the delivery of
ribozymes (either viral or nonviral), but shall not include Intermediate
Products.
10. "Licensed Services" shall mean any service which is performed for
a third-party which includes use of a Product Unit or Licensed Method.
11. "Manufacturer" shall mean a business entity which makes and sells
merchandise in finished form and ready for end use without further substantial
alteration incorporating or utilizing Intermediate Product(s).
12. "Market Year" shall mean the twelve (12) month period which
commences upon the first Commercial Sale of Licensed Products, and each ensuing
twelve (12) month period during the term of this Agreement.
13. "Net Selling Price" shall mean the actual gross selling price of
each Product Unit upon its Commercial Sale, including all packaging,
instructional or other charges made to a purchaser, but less customary trade
discounts and refunds or credits allowed for shortages, returns, or defective
articles and transportation or shipping charges and/or taxes billed by LICENSEE
to its customers. In the case of Licensed Services, (i) the term Net Selling
Price shall include the actual gross receipts received for the performance of
Licensed Services upon a Commercial Sale, less customary trade discounts and
refunds or credits; and (ii) the term "Commercial Sale" shall include any
transaction under which the Licensee or any sublicensee provides Licensed
Services to a person who is not an Affiliated or Related Interest. The actual
selling price of Product Units to a purchaser or amounts received for the
performance of Licensed Services for a third party,, with whom LICENSE has a
reciprocal discount or preferential price arrangement for merchandise, services
or use of technology and which discount or preferential price arrangement
affects the price LICENSEE charges such purchaser or third-party shall not be
the Net Selling Price thereof, but the Net Selling Price for such Product Units
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or Licensed Services shall be the actual selling price plus the amount(s) of
such discounts or price preferences.
14. "Patented Substances" shall mean those materials listed on
EXHIBIT "C" hereof previously supplied to LICENSEE.
15. "Product Units" shall mean:
(i) Licensed Products, and
(ii) Intermediate Products
ARTICLE II.
ASSIGNMENT OF LICENSE/TERMINATION OF SUBLICENSE
1. Assignment of Prior License. USB hereby assigns and delegates to
LICENSEE, and LICENSEE hereby accepts and assumes, all of USB's rights and
obligations under the Prior License Agreement. By its execution hereof,
LICENSOR consents and agrees to such assignment and delegation by USB to
LICENSEE.
2. Termination of Prior Sublicense. Effective herewith, USB and
LICENSEE agree to terminate the Prior Sublicense Agreement, which termination
shall not relieve LICENSEE or USB of any obligation or liability accrued
thereunder, rescind or give rise to any right to rescind anything done, any
payments made or to be made, or other consideration given thereunder, or
otherwise affect in any manner any rights of either party arising thereunder
accruing prior hereto.
3. Issuance of Stock to USB. As consideration in full for the
assignment by USB of the license granted to it under the Prior License
Agreement and the termination of the Prior Sublicense Agreement, LICENSEE shall
issue to USB 22,500 shares of its common stock, $.01 par value (the "Common
Stock"). Such Common Stock shall be fully-paid, non-assessable and validly
issued to USB. USB shall execute a Subscription Agreement for the shares of
Common Stock containing such representations, warranties and covenants as
LICENSEE deems necessary for compliance with applicable federal and state
securities laws. The parties acknowledge that the issuance of such Common
Stock to USB by LICENSEE is also in consideration for that
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certain Amended and Restated Sublicense Agreement between USB and LICENSEE of
even date herewith.
ARTICLE III.
DELIVERY OF PATENTED SUBSTANCES
The Foundation and the Inventors agree that Patented Substances shall
not hereafter be transferred by way of sale, gift, loan or otherwise to any
other person or business entity during the term of the license hereinafter
granted, excepting distribution to the academic community, not for profit, in
accordance with normal academic procedures. The Inventor(s) shall obtain a
written agreement from such potential academic distributees in advance of such
distribution evidencing agreement that the materials will not be used or
distributed for commercial purposes. LICENSEE understands and agrees that the
Inventors may retain and use the Patented Substances for purposes of research.
ARTICLE IV
THE LICENSE
1. Grant. Subject to the rights of the United States Government, as
set forth in P.L. 96-517, P.L. 98-620 and 00 XXX 000, as amended, LICENSOR
hereby grants to LICENSEE an exclusive worldwide license under the Licensed
Patents to exercise the following rights:
(a) To make, have made, use and sell RNA enzymes alone or when
incorporated in Licensed Products;
(b) To use, practice, or have used or practiced on its behalf,
but not to sell, the Licensed Methods;
(c) To perform, or have performed on its behalf, Licensed
Services which include use of a Product Unit or Licensed
Method;
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(d) To make, have made, use and sell plasmids as described or
claimed in the Licensed Patent and any Improvement Patent;
(e) To pass on to its customers for RNA enzymes, Licensed
Products and/or Intermediate Products, or its customers
.for Licensed Services, a license for the use thereof as
described or claimed in the Licensed Patents and any
Improvement Patent; and
(f) To sell Intermediate Products to Manufacturers, and to
grant licenses to Manufacturers to make, use and sell
Intermediate Products, to use and practice Licensed
Methods and/or to perform Licensed Services; provided that
in the case of the sale of Intermediate Products, Licensee
has theretofore entered into royalty-bearing agreements
whereunder LICENSEE obtains royalties from such
Manufacturers based upon said Manufacturers' selling
prices of merchandise:
(i) in which one or more Intermediate Product is a
constituent, and/or
(ii) in the production of which one or more Intermediate
Product is or has been utilized,
in accordance with the provisions of paragraph 2(b) and
3(b) of Article VI.
(g) To grant sublicenses with respect to any of the foregoing,
subject to the terms of Paragraph 2 of this Article IV.
2. Sublicenses. During the term of exclusivity granted hereunder,
the license hereby granted shall include the right of LICENSEE or any
sublicensee to grant written sublicenses covering Licensed Products, Licensed
Services and Licensed Methods, provided that LICENSEE shall include all sales
and receipts therefrom received from unaffiliated third parties by all
sublicensees in LICENSEE'S statements to LICENSOR as provided in Article V and
(A) in the case of sublicenses granted to parties other than to Manufacturers
shall pay royalties to LICENSOR in an amount equal to the greater of (i) [ ]
income received from each such sublicensee for the sale of Licensed Products
and Licensed Services and for use of Licensed Methods or (ii)[ ], (x) of the
Net Selling Price of each Licensed Product made or sold, or
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received from the performance of Licensed Services, by or for such sublicensee
or (y) of the amounts received by or from the sublicense of Licensed Methods
and (B) in the case of any sublicense granted to a Manufacturer in respect of
Intermediate Products pay royalties to LICENSOR as per paragraph 3(b) of
Article VI. LICENSEE and its sublicensees shall be free to grant sublicenses
at any royalty rate they may deem appropriate. Notwithstanding the foregoing,
no multiple royalties shall be payable because a Licensed Product, Licensed
Service, Licensed Method or Intermediate Product are or shall be sold or
licensed to or by a sublicensee in the same transaction.
In addition to the foregoing, LICENSEE agrees that it will remit to
LICENSOR in accordance with paragraph 2 of Article VII,[ ] of any option
fee, license fee, prepaid royalty or other "front end payment" which it may
receive from a sublicensee or which a sublicensee may receive from its
sublicensees. It is agreed that research and development funding (as defined
hereafter) does not constitute an "option fee, licensee fee, prepaid royalty or
'front-end payment'" under this paragraph.
For purposes hereof, the term "research and development funding" shall
mean funding received from third parties for (1) LICENSEE's direct or indirect
cost (purchase or lease) of materials, equipment and facilities used in
research and development; (2) salaries, wages, benefits and other related costs
of personnel engaged in or supporting the research and development activity;
(3) the cost to LICENSEE of services performed by others in connection with
LICENSEE's research and development activity; (4) the cost to LICENSEE of
payments to third parties (other than LICENSOR) for patent or other rights
utilized in research and development; (5) a reasonable allocation of general,
administrative and other indirect and overhead costs to research and
development activities; (6) debt or equity investments in LICENSEE and (7)
research and development milestone payments paid to LICENSEE for completion of
research and development activities associated with ribozyme technology and
product development. Determinations with respect to research and development
funding shall be made in accordance with generally accepted accounting
principles. Costs associated with selling products and costs associated with
facilities and equipment unrelated to research and development activities shall
not be included in "research and development funding."
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LICENSOR shall be advised of any agreement which provides for such
research funding in the semi-annual summaries submitted in accordance with
paragraph 2 of Article V, and LICENSOR shall be furnished with a true and
correct copy of any such agreement. LICENSOR shall have the right, upon prior
reasonable notice, to inspect the books and records of LICENSEE or a
sublicensee, as applicable, in accordance with the provisions of paragraph 2 of
Article VII to verify the nature of such research funding. In the event of any
disagreement between the parties with respect to the foregoing, representatives
of LICENSOR and LICENSEE or sublicensee shall meet and seek to resolve any such
disagreement, as applicable; and if the parties are unable to reach agreement,
then any such disagreement under this paragraph shall be submitted to
arbitration in accordance with the Commercial Arbitration Rules of the American
Arbitration Association then in effect before a panel of one arbitrator. The
place of arbitration shall be New York, New York. Any award rendered thereon
shall be final and binding on the parties and judgment may be entered on the
arbitrator's award in any court having jurisdiction."
LICENSEE agrees to deliver to LICENSOR a true and correct copy of each
and every sublicense entered into by LICENSEE within thirty (30) days after
execution thereof and shall promptly advise LICENSOR in writing of any
modification (and supply same) or termination of each sublicense. Upon
termination of this Agreement for any cause, any and all existing sublicenses
hereunder shall thereupon be assigned to LICENSOR. This shall be made a
condition of any such sublicense that may be granted by LICENSEE.
3. Exclusivity. LICENSOR agrees not to grant to any other party any
option, license or other right under the Licensed Patents to make, have made,
use or sell Product Units, Licensed Services and Licensed Methods during the
period of the exclusive license herein granted.
4. Consultation. The Parties recognize that during the term of this
Agreement, LICENSEE may confer and consult freely with the Inventors in
furtherance of the development and testing of Product Units, Licensed Services
and Licensed Methods, in accordance with such arrangements as they may make
among themselves.
5. Cross-Licensing. LICENSOR understands that LICENSEE'S
negotiations with Xxxx Xxxxxx (J&J) for the cross licensing of certain Xxxx
Xxxxxx patented technology to LICENSEE in exchange for the cross licensing of
certain Licensed Patents to Xxxx Xxxxxx is now in suspense. LICENSOR agrees
that in the event these negotiations are re-activated on
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terms and conditions similar to or more favorable to LICENSEE than those
described in correspondence between LICENSOR and LICENSEE during the period
April 19 to 21, 1994, LICENSOR will consent to such cross-license. (Said
correspondence being incorporated herein by this reference solely for this
purpose.).
In the event that LICENSEE believes that one or more additional cross-
licenses (other than that with Xxxx Xxxxxx referenced above) are necessary
between LICENSEE and any third party, LICENSOR shall negotiate in good faith
with LICENSEE for the grant of LICENSOR's consent thereto in return for
reasonable consideration.
If LICENSEE grants a license (an "RPI License") to any of its patented
technology, or to any of its proprietary technology for which a patent
application is pending ("RPI Technology") to any cross-licensee under this
Agreement, or any third party affiliated with or related to such cross-
licensee, and the license or option fee, royalty basis, royalty rate and/or
minimums of the RPI License are substantially greater than in the cross-
license, then LICENSOR and LICENSEE shall negotiate in good faith a division of
the incremental royalties paid under the license resulting from such
substantially greater license or option fee, royalty basis, royalty rate and/or
minimums (the "Incremental Royalties"). The division of Incremental Royalties
will be based upon the relative value the cross-licensed technology and the
licensed RPI Technology contribute to the products upon which the Incremental
Royalties are paid. In the event an agreement cannot be reached by the
parties, such matter will be arbitrated before a panel of three arbitrators,
one of whom shall be selected by LICENSEE, one of whom shall be selected by
LICENSOR, and the third of whom shall be selected by the two arbitrators so
selected by LICENSEE and LICENSOR. In no event will the payment of any part of
Incremental Royalties to LICENSOR on any license extend beyond the term of this
Agreement. In addition, in no event will LICENSOR be entitled to share in any
license or option fees, royalties and/or minimums in excess of those to which
it would be entitled if all license or option fees, royalties and/or minimums
paid under the cross-license and RPI License had instead been paid pursuant to
this Agreement.
6. Country of Origin. The Parties agree that royalties shall be
paid only upon Product Units, Licensed Services and Licensed Methods which are
covered in the country of their manufacture, use or sale by a Licensed Patent.
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ARTICLE V.
PRODUCT DEVELOPMENT
1. Due Diligence. LICENSEE has represented to LICENSOR that it is
experienced in the development and commercialization of Product Units, and that
commencing with the execution of the Prior Sublicense Agreement it committed
itself to a program of developing, obtaining governmental agency approvals for,
and marketing Product Units. LICENSEE agrees that it will diligently continue
the efforts above described. In furtherance of the foregoing, to maximize the
commercial potential of the Invention and its benefit to mankind, expanding the
number of researchers utilizing ribozyme technologies is necessary. LICENSEE's
activities and programs regarding the technology are designed to maximize the
potential of this technology and shall include the following activities:
(a) sponsorship of meetings, and seminars regarding the
technology;
(b) contacting firms in the pharmaceutical, diagnostic and
agbiotech fields to establish potential research
relationships and/or licenses;
(c) support of commercial development activities through
technology development efforts and the expertise of
LICENSEE's scientists.
2. Research and Development. LICENSEE agrees to prepare and submit
to LICENSOR semiannual summaries of its progress in conducting testing,
research and development of Product Units and LICENSOR shall have the right to
receive such summaries and to consult with LICENSEE during the term of the
License hereunder.
3. Data. LICENSEE and LICENSOR agree that during the term of the
License hereunder, they will provide to patent counsel all information and data
that either party develops or otherwise possesses which may assist patent
counsel in the filing, prosecution and defense of patent applications and
patents included in the Licensed Patents.
4. Development Plans. Pursuant to the Prior Sublicense Agreement, a
development plan (the "Initial Plan") was submitted by LICENSEE, which
described LICENSEE's expected activities for an initial period of 24 months.
Upon the expiration of the Initial Plan, LICENSEE
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submitted to Licensor a first Renewal Plan, covering its proposed plan of
activities for the time period specified therein. If one or more additional
Renewal Plans are required hereafter, the parties agree that it will be subject
to the process described below:
(a) Each Renewal Plan shall set forth: the time term of the
plan, the objectives of the Plan, the activities to be
performed by or for LICENSEE, the internal resources and
external contractual resources to be allocated to the Plan
(personnel facilities, and materials) and the budget
therefore; LICENSEE shall not allocate to a budget costs
incurred prior to the effective day of this Agreement,
costs of personnel, materials or facilities not directly
incurred in the performance of the Plan, or any portion of
its general and administrative costs;
(b) LICENSEE agrees that it shall budget and expend no less
than [ ] period of each Initial or Renewal Plan, in the
performance thereof, subject to cost of living adjustment,
and such expenditure shall be evidence of diligent
performance of LICENSEE's product development obligations
hereunder; and
(c) LICENSEE agrees that it will submit to Licensor Renewal
Plans and expend the amounts described in clauses (i) and
(ii) of this Subparagraph (b) until LICENSEE"s annual
sales of Product Units shall reach the level of [ ],
whichever shall first occur.
All such reports and plans shall be received by Licensor in strict confidence
and used solely for the purposes provided herein.
5. Remedial Action. In the event LICENSOR believes that LICENSEE
has failed to exercise reasonable diligence in the performance of the Initial
Plan or any Renewal Plan, then LICENSOR shall have the right to advise LICENSEE
of its belief and request remedial action. If LICENSOR and LICENSEE disagree,
they may bring the matter to arbitration upon mutual agreement, or lacking such
agreement, each shall rely upon such remedies and defenses as are available to
it in law or equity.
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ARTICLE VI.
PAYMENTS UNDER THE LICENSE
1. License Fee. All License Fees payable under the Prior License
Agreement have been paid to LICENSOR, and no additional License Fees shall be
payable by LICENSEE hereunder.
2. Royalty Basis. LICENSEE agrees to pay, as hereinafter provided,
royalties to LICENSOR:
(a) in respect of each Licensed Product made or sold by or for
LICENSEE;
(b) in respect of each Intermediate Product sold by Licensee
to a Manufacturer or with respect to which a Manufacturer
has been granted a sublicense as provided in paragraph
1(f) of Article IV.
(c) in respect of Licensed Services performed by or for
Licensee."
3. Royalty Rates
(a) For each Licensed Product sold by Licensee, which is
subject to paragraph 2 of this Article VI, and for
Licensed Services performed by Licensee, which are subject
to paragraph 2(c) of this Article VI, the rate shall be
[ ] of the Net Selling Price.
(b) For each Intermediate Product which is subject to
paragraph 2(b) of this Article, the rate shall be:
(i) [ ] of the Net Selling Price of such Intermediate
Product, and in addition,
(ii) [ ] of any royalty or fee (except of a
sublicense fee, which shall be payable as set forth
in paragraph 2 of Article IV and paragraph 2 of
Article VII, which a Manufacturer pays LICENSEE
upon the manufacture, use, sale or other transfer
of merchandise in which the Intermediate Product is
a constituent or has been utilized.
(c) No multiple royalties shall be payable because a Licensed
Product, Licensed Services and Licensed Method are or
shall be sold, performed
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and/or licensed in the same transaction by LICENSEE, so
long as LICENSOR receives the royalties provided for in
paragraphs 3(a) or 3(b) of this Article VI, as applicable.
(d) Notwithstanding the provisions of this Article VI, in the
event that LICENSEE is presented with an opportunity or
opportunities for the exploitation of ribozymes in
diagnostic products, through sublicensing, then LICENSOR
will cooperate in good faith with LICENSEE to revise the
royalty rate structure to permit such exploitation for the
mutual benefit of the parties.
4. Guaranteed Minimum Payments.
(a) To retain its license hereunder, LICENSEE shall pay to
LICENSOR, as minimum annual payments, no less than the
amounts set forth below:
(i) For the first Market Year, [ ];
(ii) For the second Market Year, the amount shall be
[ ] of the royalty actually earned during the
first Market Year;
(iii) For the third Market Year, the amount shall be the
greater of [ ] of the royalty actually earned
during the second Market Year;
(iv) For the fourth Market Year, the amount shall be the
greater of [ ] of the royalty actually earned
during the third Market Year;
(v) For the fifth Market Year, the amount shall be the
greater of [ ] of the royalty actually earned
during the fourth Market Year;
(vi) For the sixth and each ensuing Market Year, the
amount shall be the greater of [ ] of the royalty
actually earned during the fifth Market Year.
(vii) Payments shall be payable in accordance with
paragraph 3 of Article VII.
(b) In the event LICENSEE does not pay the minimum annual
amounts as aforesaid, LICENSOR shall have the right to
terminate the license granted hereunder; provided,
however, that if LICENSEE shall have paid
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minimum annual amounts under the license for a period of
ten (10) years, then the license shall thereafter no
longer be terminable by LICENSOR for failure to pay such
minimum annual amounts; provided LICENSEE is not in any
respect in default hereunder.
(c) Notwithstanding the foregoing, LICENSEE agrees that if it
sells Licensed Products in any country under its exclusive
license and subsequently withdraws such Licensed Products
from sale in that country (except upon governmental
requirement) and has no Commercial Sales therein for a
period of one (1) year thereafter, LICENSOR may convert
LICENSEE's exclusive license in that country to a
nonexclusive license for such Licensed Products.
ARTICLE VII.
REMITTANCES, RECORDS AND REPORTS UNDER THE LICENSES
1. Royalties.
(a) Royalties shall accrue when Product Units or Licensed
Services are first sold or performed by or for LICENSEE.
Product Units shall be considered sold to, and Licensed
Services performed for, third parties when billed out.
(b) Payments of earned royalties shall be made within sixty
(60) days following the end of each half of each Market
Year for the sale of all Product Units sold or otherwise
transferred and/or licensed services performed by or for
LICENSEE during said half Market Year. LICENSOR's
participation in royalties from Manufacturers under
paragraph 3(b)(ii) of Article VI shall be paid within
sixty (60) days following the end of each half of each
Market Year, based upon LICENSEE's receipts of such
royalty payments from Manufacturers during each half
Market Year. Such payment shall be accompanied by a
statement certified to LICENSOR by an officer of LICENSEE
which shall
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give sufficient information from which to calculate the
amount of royalties due hereunder, including, but not
limited to, the total quantity and Net Selling Price of
Product Units and/or licensed services for which royalty
has accrued during the preceding half Market Year and the
aggregate royalties due. Statements shall also be
submitted in the event no sales of Product Units took
place.
(c) Notwithstanding the foregoing paragraph, LICENSEE may
establish a reserve for bad debts in the amount of two
percent (2%) of sales of Product Units sold or otherwise
transferred and/or licensed services performed by or for
LICENSEE during each Market Year. Such reserve shall be
reconciled at the end of each Market Year and, in the
event that the amount of non-collectible accounts
receivable for the Market Year is less than the amount so
reserved, LICENSEE shall remit to LICENSOR the royalties
earned on such difference; and, in the event that the
amount of non-collectible accounts receivable for the
Market Year is greater than the amount so reserved,
LICENSEE shall be entitled to a credit against the next
scheduled royalty payment to LICENSOR in the amount of the
royalties paid by LICENSEE on such difference.
2. Sublicense Fees. Payment of LICENSOR's share of sublicense fees,
prepaid royalties or "front-end" payments received by LICENSEE from
sublicensees pursuant to paragraph 2 of Article IV shall be remitted to
LICENSOR within sixty (60) days following the end of the calendar quarter of
receipt.
3. Guaranteed Minimum Payments. LICENSEE agrees that each minimum
annual payment under paragraph 4 of Article VI shall become a present
obligation of LICENSEE to LICENSOR on the first day of each Market Year; and
LICENSEE agrees that such minimum amounts are to be paid to LICENSOR together
with the remittance made for the last accounting period of the applicable
Market Year, in the event earned royalties for such Market Year do not reach
the minimum amount set forth.
4. Currency. Payment hereunder shall be made in U. S. dollars in
the United States.
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5. Credit for Patent Expenses. LICENSEE may deduct as credits from
payment of royalties due under paragraph (1)(b) of this Article VII amounts not
to exceed of said royalties due during any half Market Year until all expenses
incurred by LICENSEE pursuant to paragraph 2 of Article VIII have been
credited.
6. Foreign Royalty Payments. With respect to sales in countries
outside the United States, royalties shall be payable in U. S. dollars at the
rate of exchange published in The Wall Street Journal on the last day of the
accounting period in which the royalty accrues. Royalties shall be paid to
LICENSOR free and clear of all foreign taxes, including withholding and
turnover taxes, except such taxes which LICENSEE may be required to withhold by
a foreign country (provided that LICENSOR can receive full credit for such
taxes with the Internal Revenue Service of the United States) .
7. Inspection. LICENSEE shall keep records in sufficient detail to
permit the determination of royalties payable hereunder and, at the request and
expense of LICENSOR, will permit an independent Certified Public Accountant,
acceptable to both LICENSOR and LICENSEE, to examine, in confidence, during
ordinary business hours once in each calendar year such records as may be
necessary to verify or determine royalties paid or payable under this
Agreement. For the purposes of this paragraph, LICENSEE shall be required to
retain its records for no more than three (3) years.
8. Price. LICENSEE shall submit to LICENSOR, no less than once per
year during the life of this Agreement, copies of its customer catalogs in
which Licensed Products and Licensed Services are listed for sale.
ARTICLE VIII.
PATENT PROTECTION
1. Patent Filing and Maintenance. LICENSEE shall apply for,
prosecute and maintain all Licensed Patents as it deems appropriate in its sole
discretion using counsel of its own choice, provided that LICENSEE shall be
reasonably diligent in the prosecution of such patent applications. LICENSEE
shall provide to LICENSOR copies of each application and all Patent Office
actions and responses. All patents obtained by LICENSEE shall be issued in the
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name of LICENSOR as the assignee and owner. RPI shall advise LICENSOR of its
intention to abandon any such patent application or patent thirty (30) days
prior to taking such action. Upon receipt of such notice, all rights in the
application or patent shall automatically revert to LICENSEE.
2. Recovery of Patent Expenses. LICENSEE shall bear the expenses
associated with the filing, prosecution and maintenance of Licensed Patents
including, without limitation, filing, maintenance, and attorneys' fees;
provided that, LICENSEE shall be entitled to recover such costs from royalties
otherwise to become due to LICENSOR, earned in the country in which the
application was filed, in accordance with paragraph 6 of Article VII.
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ARTICLE IX.
ENFORCEMENT OF LICENSED PATENTS
1. Enforcement. In the event LICENSEE, LICENSOR, the Foundation or
URC becomes aware of any actual or threatened infringement of a Licensed Patent
anywhere in the world, that party shall promptly notify the other parties in
writing. LICENSEE shall have the first right to bring, at its own expense, an
infringement action against any third party and to use the' names of LICENSOR,
the Foundation and URC in connection therewith. If LICENSEE does not proceed
with a particular patent infringement action within ninety (90) days, LICENSOR,
after notifying LICENSEE in writing, shall be entitled to take proceedings
against such infringer at its own expense, and shall have the right to settle
infringement litigation by licensing the infringer, unless LICENSEE shall
equally share the cost of enforcement with LICENSOR. The party conducting such
suit shall have full control over its conduct. In any event, LICENSOR, the
Foundation, Institution and LICENSEE shall assist one another and cooperate in
any such litigation upon request without expense to the requesting party. Any
recovery as a result of any litigation or settlement thereof shall be the
property of the party bearing the principal responsibility of such litigation.
2. Defense. In the event a third party brings an action to obtain a
declaration of patent invalidity of a Licensed Patent (a "DJ Action") against
LICENSOR and/or LICENSEE:
(a) The named defendants shall have the first right to defend
said action at its own cost and expense and to control
ensuing litigation.
(b) If the named defendant elects not to defend the DJ Action,
the other Party may elect to defend the DJ Action at its
own cost and expense and to control the ensuing
litigation.
(c) If a litigating Party finally prevails, it shall retain
all damages which it may collect.
(d) If either Party finally loses because a patent is held
invalid, LICENSEE may thereafter cease paying royalties on
sales of Licensed Products, the performance of Licensed
Services or Product Units and use of Licensed
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Methods, as the case may be, in the country in which such
invalidity has been finally adjudicated provided that
Licensed Products, Product Units, Licensed Services and
Licensed Methods, as the case may be, are covered or the
use thereof are covered only by claims which have been
held invalid.
ARTICLE X.
TERMS OF LICENSE: TERMINATION
1. Term. The term of this Agreement shall be from the date first
written above until the expiration of the last to expire of any patent included
in the Licensed Patents.
2. Termination. LICENSEE may terminate this Agreement:
(a) For cause; or
(b) Upon sixty (60) days written notice to LICENSOR, provided
that LICENSEE shall thereafter terminate the manufacture,
sale and/or use of Product Units except for disposition of
inventory on hand, for which royalties shall be paid in
accordance with Article VI hereof. Disposition of
inventory must be complete within one hundred twenty (120)
days of the aforementioned notice.
(c) If LICENSEE shall at any time default in any obligation
under this Agreement, including but not limited to failing
to make any report, pay any royalties, or permit the
inspection of its books and records as hereinabove
required, and such default shall not be cured within sixty
(60) days after written notice from LICENSOR to LICENSEE
specifying the nature of the default, then LICENSOR shall
have the right to terminate the license granted to
LICENSEE hereunder and such termination shall become
effective on the sixtieth (60th) day after giving such
notice.
(d) Any termination pursuant hereto shall not relieve LICENSEE
or LICENSOR of any obligation or liability accrued
hereunder prior to such
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termination, nor rescind or give rise to any right to
rescind anything done or any payments made or other
consideration given hereunder prior to the time of such
termination and shall not affect in any manner any rights
of either party arising out of this Agreement prior to
such termination.
ARTICLE XI.
REPRESENTATIONS AND WARRANTIES
1. Representations of LICENSOR; No Warranties. LICENSOR represents
that it has the right to enter into this Agreement and that, to the best of
LICENSOR's knowledge, no amounts are due LICENSOR from either LICENSEE or USB
under the Prior License Agreement. LICENSOR makes no other representation or
warranty, express or implied, except as herein provided, nor does LICENSOR
assume any liability in respect of any infringement of any patent or other
rights of third parties due to LICENSEE's operation under the rights herein
granted. LICENSEE recognizes that the Patented Substances and the RNA enzymes
produced therefrom have been produced by the Inventors for research purposes
only. THE INVENTORS, THE FOUNDATION, URC, AND LICENSOR EXPRESSLY DISCLAIM THAT
THE PATENTED SUBSTANCES AND/OR THE RNA ENZYMES PRODUCED THEREFROM WILL BE OF
ANY COMMERCIAL VALUE TO LICENSEE WHATSOEVER, AND NO SUCH REPRESENTATION OR
WARRANTY OF SUCH VALUE SHOULD BE IMPLIED. LICENSEE AGREES THAT IT IS OBTAINING
THE LICENSES HEREIN GRANTED WITHOUT ANY REPRESENTATION OF VALUE,
MERCHANTABILITY OR FITNESS FOR USE.
2. Representations of USB. USB represents that no amounts, whether
in the form of royalties, license fees, up-from payments or any other
obligation, are due from it to LICENSOR under the Prior License Agreement, and
no such obligations have accrued thereunder as of the date hereof.
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ARTICLE XII.
PREFERENCE FOR U. S. INDUSTRY
In view of Public Law 96-517, Public Law 98-620 and regulations
thereunder, LICENSEE agrees that any Product Unit covered by Licensed Patents
or produced through the use of a method or process claimed in the Licensed
Patents for sale in the United States of America will be manufactured
substantially in the United States of America, unless a waiver of such
obligation is obtained from the Federal Agency which supported in whole or in
part said invention. LICENSEE shall include the foregoing provision in any
sublicense(s) it grants hereunder.
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ARTICLE XIII
COMMUNICATION
Any payment, notice or other communication required or permitted to be
made or given to a Party pursuant to this Agreement shall be sufficiently made
or given on the date of mailing if sent to such Party by certified or
registered mail, postage prepaid, addressed to it at its address set forth or
to such other address as it shall designate by written notice to the other
Party as follows:
In the case of LICENSOR:
President
Competitive Technologies, Inc.
x/x XXXX
X. 0. Xxx 000
Xxxxxxxxx, Xxxxxxxxxxx 00000
In the case of LICENSEE:
President
Ribozyme Pharmaceuticals, Inc.
0000 Xxxxxxxxxx Xxxxx
Xxxxxxx, Xxxxxxxx 00000
In the case of USB:
President
United States Biochemical Corporation
00000 Xxxxx Xxxx
Xxxxxxxxx, Xxxx 00000
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ARTICLE XIV.
ASSIGNMENTS
This Agreement shall not be assignable by LICENSEE without the prior
written consent of LICENSOR except to a successor in ownership of all or
substantially all of the business assets of LICENSEE, and which successor shall
expressly assume in writing the performance of all the terms and conditions of
this Agreement to be performed by the assigning Party.
ARTICLE XV.
MISCELLANEOUS
1. Execution. This Agreement will not be binding upon the Parties
until it has been signed herein below by or on behalf of each Party, in which
event it shall be effective as of the date first above written. No amendment
or modification hereof shall be valid or binding upon the Parties unless made
in writing and signed as aforesaid.
2. Construction. This Agreement embodies the entire understanding
of the Parties and shall supersede all previous communications, representations
or undertakings, either verbal or written between the Parties relating to the
subject matter hereof.
3. Indemnification. LICENSEE agrees to indemnify and hold harmless
LICENSOR, the Foundation, URC, and the Inventors from and against any and all
claims, damages and liabilities asserted by third parties (private and
governmental) arising from LICENSEE's sale of Product Units and/or the
purchaser's use thereof or from the performance of Licensed Services or use of
Licensed Methods, as the case may be.
4. Anonymity. LICENSEE shall have no right to use the names or
other designation of THE UNIVERSITY OF COLORADO or the Inventors in connection
with any sales or promotion of Product Units, Licensed services and Licensed
Methods, as the case may be without the express written consent of the
Institution or the Inventors, as the case may be.
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5. Severability. If any provision or provisions of this Agreement
shall be held to be invalid, illegal or unenforceable, the validity, legality
and enforceability of the remaining provisions shall not in any way be affected
or impaired thereby.
6. Jurisdiction. This Agreement shall be construed, and the legal
relations between the Parties determined, in accordance with the law of the
State of Connecticut, U.S.A.
7. Headings. The headings of the several sections are inserted for
convenience of reference only, and are not intended to be part of or to affect
the meaning or interpretation of this Agreement.
8. Force Majeure. Neither of the Parties hereto shall be liable in
damages or have the right to cancel this Agreement for any delay or default in
performing hereunder if such delay or default is caused by conditions beyond
its control, including acts of God, government restrictions, wars or
insurrections.
9. No Waiver. Failure by either party to enforce any provision of
this Agreement or assert a claim on account of breach hereof shall not be
deemed a waiver of its right to enforce the same or any other provision hereof
on the occasion of a subsequent breach.
10. Compliance. LICENSEE agrees to comply voluntarily with and abide
by the United States Department of Health and Human Services, National
Institutes of Health "Guidelines for Research Involving Recombinant DNA
Molecules". June 1981, 46 F.R. 34461, or as subsequently amended, so long as
LICENSEE uses the Patented Substances conveyed to it hereunder.
11. Remedies. The remedies provided in this Agreement are not and
shall not be deemed to be exclusive and shall be in addition to any other
remedies which either party may have at law or in equity.
12. Counterparts. This Agreement may be executed in two (2) or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
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IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be
duly executed as of the date first above written.
COMPETITIVE TECHNOLOGIES, INC.
By: /s/ Xxxx Xxxxxxxx
Title: Assistant Vice President
Date: November 20, 0000
XXXXXX XXXXXX BIOCHEMICAL CORPORATION
By: /s/ Xxx Xxxx
Title: President
Date: November 20, 1996
RIBOZYME PHARMACEUTICALS, INC.
By: /s/ Xxxxx X. Christoffesen
Title: President/CEO
Date: November 20, 1996
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EXHIBIT A
What is claimed:
[ ]
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EXHIBIT B
EXHIBIT B
"Licensed Patents"
Patents and Pending Applications
================================================================================
PATENT NO. OR
CLAIMS PATENT APPLICATION NO TITLE
--------------------------------------------------------------------------------
1 - 47 U.S. Xxx. No. 4,987,071 (Parent) RNA Ribozyme Polymerase
Dephosphorylases Restriction
Endoribonucleases and Methods
--------------------------------------------------------------------------------
48 - 62 U.S. Xxx. No. 5,093,246 RNA Polymerase Dephosphorylases
(Division of U.S. Xxx. No. Restriction
4,987,071) Endoribonucleases and Methods
--------------------------------------------------------------------------------
63 - 66 Xxx. No. 4,987,071 See above
--------------------------------------------------------------------------------
67 and 68 U.S. Xxx. No. 5,093,246 See above
--------------------------------------------------------------------------------
69 U.S. Xxx. No. 4,987,071 See above
--------------------------------------------------------------------------------
70 U.S. Xxx. No. 4,987,071 See above
--------------------------------------------------------------------------------
71 U.S. Xxx. No. 5,093,246 See above
--------------------------------------------------------------------------------
72 U.S. Xxx. no. 5,037,746 RNA Ribozyme Polymerases and
(Continuation-in-part of Methods
U.S. Xxx. No. 4,987,071)
--------------------------------------------------------------------------------
73 Xxx No. 4,987,071 See above
================================================================================
Notes:
1. U.S. Patent No. 5,116,742 entitled "RNA Ribozyme Restriction
Endoribonucleases and Methods," filed March 24, 1989, is a continuation-in-part
of U.S. Patent No. 4,987,071, and includes additional claims which were not
contained in the original patent application.
2. U.S. Patent Application Serial No. 843,737 entitled "RNA Polymerase
Dephosphorylases Restriction Endoribonucleases and Methods," filed February 28,
1992, is a continuation of U.S. Patent No. 5,093,246. It has been allowed, and
the issue fee is due to be paid on or before February 24, 1994.
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EXHIBIT C
PATENTED SUBSTANCES
[ ]
30
